The amicus-style brief notes that following the Supreme Court’s decisions in AZT (2002) and VIAGRA (2012), “there has been uncertainty with respect to the precise scope of the utility requirement under Canadian law and in particular the extent to which the utility of a patented invention should be disclosed or supported in the patent specification.”
In AZT, the Court stated that utility must either be demonstrated or be a sound prediction based on information and expertise available at the filing date. In VIAGRA, the Court declined to decide the scope of any disclosure requirement associated with “sound prediction”. The brief states that this “remains an open question in the jurisprudence of this Court, and an area of significant uncertainty in Canadian law”.
Noting that the Court has in previous cases said it is desirable not to apply Canada’s IP laws in a judicial vacuum, AIPPI submits that (1) many jurisdictions have a utility or industrial applicability requirement, (2) for many jurisdictions, the utility or industrial applicability must be indicated in the specification if it is not otherwise obvious, (3) for many jurisdictions, there is no requirement that proof or support be provided in the patent specification, and (4) in a number of jurisdictions “it is relatively rare that utility or industrial applicability is a basis to deny the grant of a patent or for invalidating a granted patent”.
The brief draws on research done by AIPPI over the years and reviews the utility/industrial applicability requirement in the United States, Australia, the EPC and European countries, and Japan. It concludes: “[A] determination on the disclosure requirements in Canada that is, to the extent permissible or practical, consistent with the disclosure requirements of other major jurisdictions can only lead to greater certainty and lower costs for patentees who seek patent protection in Canada.”
Other organisations that have filed briefs in this case include BIOTECanada, Canada’s Research-Based Pharmaceutical Companies, the Centre for Intellectual Property Policy, the Canadian Generic Pharmaceutical Association and FICPI. The case is due to be heard by the Court later this year.
