The End of Utility? Supreme Court of Canada Rewrote Patent Law Rationale as We Knew It
After Douez v. Facebook and Google v. Equustek, the Supreme Court of Canada released another much-anticipated decision in AstraZeneca Canada v. Apotex this morning. For a unanimous court, Justice Rowe rewrote the rationale of patent monopoly in Canada, taking down the “Promise Doctrine” as the correct method of determining whether the utility requirement was met.
Patents are based on a “social contract” to protect technical inventions in order to foster technical innovation for the benefits of Canadians. Patent holders have substantial powers to prohibit anyone to do anything with their invention. The counterpart of those powers is a time limitation (e.g. 20 years in Canada), and public divulgation of the invention details to enrich public knowledge. Because for 20 years patent applicants could block the growth of a whole industry, legislators and courts have developed stringent criteria for patentability.
One of those criterium is “utility.” Long ago, Canada (along with other countries) decided that patents would only be granted to inventions that have a utility for society. Inventors were requested to explain how their invention would have a utility to prevent the patenting of fanciful, speculative or inoperable inventions.
Until today, it was considered, for a patent to be valid, that the patented invention should do what the patent says it will do. Otherwise, courts would cancel the patent. The Promise Doctrine, as it was called, played a key role in ensuring patentees do not overpromise/lying in their patent applications.
AZ argued that the Promise Doctrine was an extra-statutory requirement of utility with no basis in the Patent Act. And for an unanimous Supreme Court, Justice Rowe indeed considered that
“the Promise Doctrine is not the correct method of determining whether the utility requirement under s. 2 of the Patent Act is met.” (at ¶24)
Moreover, Justice Rowe stated that
“This doctrine, however, is unsound. It is an interpretation of the utility requirement that is incongruent with both the words and the scheme of the Patent Act” (at ¶36)
Justice Rowe decided that it would be too onerous to submit patent applicants to such an interpretation of the utility criteria :
“The Promise Doctrine is excessively onerous in two ways: (1) it determines the standard of utility that is required of a patent by reference to the promises expressed in the patent; and (2) where there are multiple expressed promises of utility, it requires that all be fulfilled for a patent to be valid.” (at ¶37)
According to Justice Rowe,
“The Act does not prescribe the degree or quantum of usefulness required, or that every potential use be realized — a scintilla of utility will do. A single use related to the nature of the subject-matter is sufficient, and the utility must be established by either demonstration or sound prediction as of the filing date” (at ¶55) (my emphasise)
The Court decided that, even though the invention was not able to do what was described in the patent, the patent should be valid as the invention was still useful for some purposes.
This is quite an unexpected reasoning. Canadian courts were known to be quite strict and socially-aware of the “social contract” upon which is grounded patent law. Contrary to other jurisdictions, in 2002, the Supreme Court refused to patent a transformed mouse gene. Similarly, in 2012, the Supreme Court cancelled the Viagra patent because Pfizer did not disclose everything in their patent; that misrepresentation cost Pfizer their patent.
Today, Canada has become one of the less restrictive jurisdictions in the world. This is certainly good news for patent holders as one of the most significant restrictions is abolished; but not so much for Canadians.
As one my colleagues noted on Twitter, this is also good news for the protection of AI and machine learning-related discoveries in Canada.
No need to really know anymore what your invention could/would do.
It is in line with a certain political agenda; but do we want to promote AI and machine learning in Canada at any price?
For decades, Canadian courts and lawmakers have developed safeguards. Today, the Supreme Court is re-questioning patent rationale.
And of course, foreign pharmaceutical companies are ecstatic! The Stat article on the ruling was introduced as follows:
The global pharmaceutical industry was handed a big win on Friday when Canada’s Supreme Court ruled that long-standing criteria for awarding patents are too rigorous, opening the door for drug makers to more easily win patent protection and thwart generic competition.
The decision follows a sustained effort by the industry to force the Canadian government to overhaul its approach to patent law, which it claimed was discriminatory and resulted in more than two dozen pharmaceutical patents being invalided over the last decade.
(my emphasise)
Quite a surprising end of June at the Supreme Court of Canada!
