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In Canadian patent law, inventions must be useful, in addition to novel and non-obvious, in order to be patented. [1]
Although utility can be demonstrated by commercial success, it only requires that the invention is directed to a practical use and that it does what is indicated in the patent. The mechanism underlying an invention's function does not need to be disclosed in the patent. If a mechanism is proposed in the patent but is subsequently disproven, the patent is not invalidated. [2]
An invention is useful if it does what it promises; following the directions should result in the desired effect. The inventor does not have to have created the product of the invention, but the specifications must disclose an actual way to do so. [3]
A patent is addressed to a person skilled in the art, and any prior art and knowledge that such a person would have can be taken into consideration when the patent is being interpreted by the courts. [4] If a patent's scope is so broad that a person skilled in the art could follow its specifications and not get the useful result, the invention is not useful. [5]
To be valid, a patent's usefulness must be established, whether by demonstration or by sound prediction, at the time of the patent application. Any evidence of utility after this date is irrelevant, regardless of when the patent's validity is challenged. Later proof of an invention's inutility can be used to invalidate a patent. [6]
The utility of an invention can be established by sound prediction where “utility can be predicted in advance of complete testing." This is a question of fact, and there are three prongs to the doctrine: [7]
The grant of a patent gives the inventor a monopoly in the market for its product. This monopoly is granted in exchange for the disclosure of the invention which can be further developed by society. The requirement that the invention is useful ensures that society receives accurate and complete disclosure. [8]
That a patent does not have to be economically useful is justified by the fact that these kinds of discoveries may lay the foundation for more profitable discoveries. [9]
The basis for the doctrine of sound prediction is the expedited disclosure of inventions. By ensuring that these inventions are not speculation or misinformation, the public domain remains uncluttered. [10]
In United States patent law, utility is a patentability requirement. As provided by 35 U.S.C. § 101, an invention is "useful" if it provides some identifiable benefit and is capable of use and "useless" otherwise. The majority of inventions are usually not challenged as lacking utility, but the doctrine prevents the patenting of fantastic or hypothetical devices such as perpetual motion machines.
Novelty is one of the patentability requirement for a patent claim, whose purpose is to prevent issuing patents on known things, i.e. to prevent public knowledge from being taken away from the public domain.
Sufficiency of disclosure or enablement is a patent law requirement that a patent application disclose a claimed invention in sufficient detail so that the person skilled in the art could carry out that claimed invention. The requirement is fundamental to patent law: a monopoly is granted for a given period of time in exchange for a disclosure to the public how to make or practice the invention.
Harvard College v Canada (Commissioner of Patents) is a leading Supreme Court of Canada case concerning the patentability of higher life forms within the context of the Patent Act. At issue was the patentability of the Harvard oncomouse, a mouse that had its genome genetically altered by a cancer-promoting gene (oncogene). In a 5-4 split, the Supreme Court held that the oncomouse and higher life forms in general are not patentable subject matter in Canada.
Canadian trademark law provides protection to marks by statute under the Trademarks Act and also at common law. Trademark law provides protection for distinctive marks, certification marks, distinguishing guises, and proposed marks against those who appropriate the goodwill of the mark or create confusion between different vendors' goods or services. A mark can be protected either as a registered trademark under the Act or can alternately be protected by a common law action in passing off.
Kirkbi AG v. Ritvik Holdings Inc., popularly known as the Lego Case, is a decision of the Supreme Court of Canada. The Court upheld the constitutionality of section 7(b) of the Trade-marks Act which prohibits the use of confusing marks, as well, on a second issue it was held that the doctrine of functionality applied to unregistered trade-marks.
Apotex Inc v Wellcome Foundation Ltd, [2002] 4 S.C.R. 153, is a leading Supreme Court of Canada decision on the utility requirement for a patent in Canada. The Court rejected a challenge by the generic drug manufacturers Novopharm and Apotex to declare Glaxo Wellcome's patent for AZT, an AIDS-fighting drug, invalid.
Canadian patent law is the legal system regulating the granting of patents for inventions within Canada, and the enforcement of these rights in Canada.
Canadian intellectual property law governs the regulation of the exploitation of intellectual property in Canada. Creators of intellectual property gain rights either by statute or by the common law. Intellectual property is governed both by provincial and federal jurisdiction, although most legislation and judicial activity occur at the federal level.
In Canada, every patent application must include the “specification”. The patent specification has three parts: the disclosure, the claims, and the abstract. The contents of the specification are crucial in patent litigation.
For a patent to be valid in Canada, the invention claimed therein needs to be new and inventive. In patent law, these requirements are known as novelty and non-obviousness. A patent cannot in theory be granted for an invention without meeting these basic requirements or at least, if a patent which does not meet these requirements is granted, it cannot later be maintained. These requirements are borne out of a combination of statute and case law.
A patent holder in Canada has the exclusive right, privilege and liberty to making, constructing, using and selling the invention for the term of the patent, from the time the patent is granted. Any person who does any of these acts in relation to an invention without permission of the patent owner is liable for patent infringement.
In Canada, passing off is both a common law tort and a statutory cause of action under the Canadian Trade-marks Act referring to the deceptive representation or marketing of goods or services by competitors in a manner that confuses consumers. The law of passing off protects the goodwill of businesses by preventing competitors from passing off their goods as those of another.
In Canadian patent law, only “inventions” are patentable. Under the Patent Act, only certain categories of things may be considered and defined as inventions. Therefore, if a patent discloses an item that fulfills the requirements of novelty, non-obviousness and utility, it may nonetheless be found invalid on the grounds that it does not fall within one of the statutory categories of “invention”. Since the Patent Act, the categories of patentable subject matter have been defined and interpreted by Canadian courts.
Under Canadian trade-mark law, "confusion" is where a trade-mark is similar enough to another trade-mark to cause consumers to equate them. Likelihood of confusion plays a central role in trade-mark registration, infringement and passing-off. Whether a trade-mark or trade-name is confusing is a question of fact. The role of confusion in trade-mark law is analogous to the role of substantial infringement in patent law.
Apotex Inc v Sanofi-Synthelabo Canada Inc, [2008] 3 S.C.R. 265, is a leading Supreme Court of Canada decision on the novelty and non-obviousness requirements for a patent in Canada. The Court rejected a challenge by the generic drug manufacturer Apotex to declare Synthelabo Canada's patent for Plavix, an anti-coagulant drug, invalid. At issue was whether selection patents are invalid in principle, and if they are not, whether the subject selection patent was invalid on the grounds of anticipation, obviousness or double patenting.
Tennessee Eastman Co v Canada (Commissioner of Patents), [1974] S.C.R. 111, is a leading Supreme Court of Canada authority for the proposition that medical or therapeutic methods are not patentable in Canada.
In United States patent law, incredible utility is a concept according to which, in order for an invention to be patentable, it must have some credible useful function. If it does not have a credible useful function despite the assertions of the inventor, then the application for patent can be rejected as having "incredible utility". The invention does not have to work the way the inventor thinks it works, but it must do something useful. Patents that have been held invalid for incredible utility include:
Teva Canada Ltd v Pfizer Canada Inc, 2012 SCC 60 is a leading Supreme Court of Canada decision on the disclosure requirements for a patent in Canada.
Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 SCR 120, is a Supreme Court of Canada judgment on trademark law and more specifically the issue of passing off. Ciba-Geigy brought an action against Apotex and Novopharm, alleging that their versions of the prescription drug metoprolol were causing confusion to the public due to their similar appearance to Ciba-Geigy's version of the drug Lopresor. On appeal to the SCC, the issue was whether a plaintiff is required to establish that the public affected by the risk of confusion includes not only health care professionals but also the patients who consume the drugs in a passing off action involving prescription drugs of a similar appearance. The Supreme Court held affirmatively on this question.