Canadian Patent Law: 2014 Year In Review

This article summarizes noteworthy Canadian patent law decisions and developments from 2014.

1. Court of Appeal addresses patent utility in Celebrex

Canadian Courts have continued to address allegations that patents are invalid because they lack utility. A notable 2014 Court of Appeal decision in this regard is Celebrex (Apotex Inc v. Pfizer Canada Inc, 2014 FCA 250).

In Celebrex, the Court of Appeal addressed the "promise of the patent" doctrine and, in short, found that an inventor who explicitly promises a specific result will be held to that promise for establishing utility.

Section 2 of Canada's Patent Act requires, among other things, that an invention be "useful", i.e., that it possess utility. Courts have long held that it is not difficult to meet the requirement of utility. In this regard, an inventor need not expressly set out the utility of the invention in the patent. Rather, it is merely required that, where the inventor is called upon to prove the utility of the invention, utility can be shown to be demonstrated or soundly predicted as of the patent's filing date. The threshold that must be proven to establish utility is generally quite low, described as being no more than a "scintilla of utility".

Notwithstanding the traditionally low threshold for utility, the Court of Appeal stated that the "promise doctrine represents an exception to the above minimum statutory requirements". In this regard, "[t]hough an inventor need not describe any particular utility for the invention, an inventor who explicitly promises a specific result will be held to that promise when called upon to prove utility... That the invention may well have satisfied the scintilla threshold is of no assistance in establishing utility where a promise, if it be made, cannot be met".

At issue in Celebrex was whether certain statements in the patent's disclosure rose to the level of explicit promises. Ultimately, the Court of Appeal upheld the lower Court's findings that there were no explicit promises. In particular, the patent did not contain an explicit and unequivocal promise regarding side effects or treatment in humans, but rather only a possibility of reduced side effects and claims that spoke only of the treatment of "subjects". At most, reduced side effects were understood to be a goal or advantage, but not a promise that would implicate the promise doctrine.

Celebrex is consistent with the Court of Appeal's findings in Plavix (sanofi-aventis v. Apotex Inc, 2013 FCA 186) regarding the promise doctrine. The Supreme Court of Canada was set to hear argument with respect to an appeal from the Court of Appeal's decision in Plavix in November 2014; however, the appeal to the Supreme Court was discontinued just prior to the...

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