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How to break the promise doctrine? Perhaps by clarifying the Patent Act by amending legislation. No doubt that would create further interpretative difficulties, but it would solve the present problem.

Alternatively, the case of AstraZeneca v. Apotex will soon be decided by the Supreme Court of Canada. This case provides the court an opportunity to clarify the promise doctrine, and it should take the opportunity. The Supreme Court can right the wrongs that courts, including itself, have wrought.

The promise doctrine seems to have grown out of the “sound prediction” doctrine. Sound prediction provides a secondary basis for patent-holders to satisfy the requirement for inventions to be useful. Sound prediction helps when utility hasn’t yet been fully demonstrated in fact (for example, “we believe this could cure rashes”).

From this sensible beginning the promise doctrine grew out of reasonable bounds. First, it led to courts seeking promises in statements in patents that may not have been intended as sound prediction; indeed, to potentially base them on any statement in the patent disclosure (“could cure rashes including poison ivy, heat rash and contact dermatitis”). Second, it led to the invalidation of patents where the scope of the described promise proved not to have been fully realized (“Oops! Turns out it doesn’t cure poison ivy”). Yet in this example the patent still meets the utility requirement (because it cures rashes other than poison ivy).

The promise doctrine is a long way from the “mere scintilla” of utility Canada nominally requires, and other countries actually require. A permissive doctrine has been turned on its head to invalidate patents instead.

The promise doctrine has corrupted Canadian patent law and irritated international relations. By legislation or by judicial intervention, it is time to excise it and return to a more sensible understanding of utility.

Richard C. Owens, is a lawyer specializing in intellectual property and a senior fellow at the Macdonald-Laurier Institute.