In Canada, a patent can be obtained if the inventor can soundly predict the utility of what is claimed. Demonstrated utility is not necessary at the filing date. However, over time, a test as to what is required to meet the definition of a sound prediction has developed and morphed to the point where the court is often requiring additional elements to be present in the patent disclosure. In this two-part series, we will discuss the evolution and current requirements for the test, as well as how this compares to the requirements in the rest of the world.
In Part 1, the origin of the doctrine of sound prediction will be discussed, as well as how it has morphed over time to the point where patents claiming blockbuster drugs are being invalidated for a lack of sound prediction of utility. Furthermore, we will talk about how sound prediction of utility is being conflated with sufficiency of disclosure requirements and the s.53 misleading representation/fraud provisions of the Canadian Patent Act.
- origins of sound prediction vs the current test how sound prediction has evolved to its present state
- construction of the promise of the patent how the courts are interpreting statements in the disclosure about potential advantages or objects
- the current test for a sound prediction what the courts want to see
- conflation of sound prediction with sufficiency of disclosure and s. 53 how the current test for a sound prediction has become a requirement for the disclosure of the patent to be sufficient and not misleading
- strategies to try to protect your current patent applications from these challenges
- litigation strategies to try to overcome these challenges
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