AstraZeneca Canada Inc. v. Apotex Inc.: Decision of the Supreme Court 30 June 2017 – Case No. 36654

• Published in: IIC - International Review of Intellectual Property and Competition Law 2017-11, Vol.48 (7), p.864-865
• Main Author: AstraZeneca Canada Inc., AstraZeneca Aktiebolag and AstraZeneca UK Limited v. Apotex Inc. and Apotex Pharmachem Inc. Patent Act, R.S.C. 1985, c. P-4, Sec. 2
• Format: Article
• Language: English
• Subjects: Decision • Patent Law; Intellectual Property; IT Law; Law; Law and Criminology; Media Law
• ISSN: 0018-9855; 2195-0237
• DOI: 10.1007/s40319-017-0639-1

The Promise Doctrine is not the correct method of determining whether the utility requirement under Sec. 2 of the Patent Act is met. This doctrine holds that if a patentee’s patent application promises a specific utility, only if that promise is fulfilled, can the invention have the requisite utility, but where no specific utility is promised, a mere scintilla of utility will suffice. Generally, an analysis regarding issues of validity will focus on the claims alone, and only considers the disclosure where there is ambiguity in the claims. This is in accordance with the Court’s direction that claims construction precedes all considerations of validity. The Promise Doctrine, by contrast, directs courts to make determinations regarding utility by reading both the claims and the disclosure to identify potential promises, even in an absence of ambiguity in the claims. The Promise Doctrine then provides that if any one of the promises is not fulfilled, the utility requirement in Sec. 2 is not met and the patent, in its entirety, is invalid. The Promise Doctrine is incongruent with both the words and the scheme of the Patent Act. First, it conflates Secs. 2 and 27(3), by requiring that to satisfy the utility requirement in Sec. 2, any use disclosed in accordance with Sec. 27(3) must be demonstrated or soundly predicted at the time of filing. If that is not done successfully, the entire patent is invalid, as the pre-condition for patentability – an invention under the Sec. 2 of the Act – has not been fulfilled. Second, to require all multiple uses be met for the patent’s validity to be upheld, runs counter to the words of the Act and has the potential for unfair consequences. The Promise Doctrine risks, as was the case here, for an otherwise useful invention to be deprived of patent protection because not every promised use was sufficiently demonstrated or soundly predicted by the filing date. Such a consequence is antagonistic to the bargain on which patent law is based wherein we ask inventors to give fulsome disclosure in exchange for a limited monopoly. The words in Sec. 2 of the Act ground the type of utility that is pertinent by requiring that it is the subject-matter of an invention or improvement thereof that must be useful. To determine whether a patent discloses an invention with sufficient utility under Sec. 2, courts must first identify the subject-matter of the invention. Second, courts must then ask whether that subject-matter is useful, that is, wh