Supreme Court of Canada eliminates Promise of Patent Doctrine

In an exciting decision released today, the Supreme Court of Canada eliminates the Promise Doctrine in Canadian patent law, which was established by the Federal Courts of Canada some years ago.

Under the Promise Doctrine, patents could be invalidated if they did not live up to all of the promises made in the patent, such as to a particular utility or advantage.  To the delight of many patent holders, the Supreme Court finds that a single use related to the nature of the subject matter is sufficient, and that utility must be established by either demonstration or sound prediction as of the filing date.  The Court also confirms that a patent holder is not required to disclose the utility of the invention.  For the full decision:



The Federal Court of Appeal (FCA) largely approved Justice Phelan’s reasons in the lower court.  “I agree that no Canadian jurisprudence determines conclusively that a business method cannot be patentable subject matter.”  However, the FCA critized Justice Phelan’s “practical embodiment or practical application” test.

The FCA allowed’s appeal from the Commission and requires the Commissioner to re-examine the patent application on an expedited basis in accordance with its reasons.

Since its release on Friday, this decision has been criticized because the FCA appears to have abdicated its responsibility to decide the law on the case before it.  Instead, the FCA has passed that responsibility onto the Commissioner to formulate a decision without any clear guidance on the law.

Please follow the link for a copy of the decision: 2011-11 Federal Court of Appeal Decision







Canadian Federal Court of Appeal Rejects “Lack of Good Faith” as Grounds for Patent Invalidation

A recent Federal Court of Appeal (FCA) decision in the case of Corlac Inc. et al. v. Weatherford Canada Limited et al. has clarified Canada’s position on “lack of good faith” as suitable grounds for patent invalidation.

Originally, Weatherford Canada Ltd., licensee of Canadian Patent No. 2,095,937 (the ‘937 patent), brought an infringement action against Corlac Inc.  The Federal Court held that the  ‘937 patent was valid and infringed.

On appeal, Corlac argued that the patent was invalid due to technical non-compliance with Section 73 of the Patent Act.  Corlac cited section 73 (1) (a), which requires the applicant to “reply in good faith to any requisition made by an examiner”.  Corlac suggested that the applicant failed to meet the duty of good faith and thus, that the application should have been abandoned.

The FCA however held that the operation of s. 73(1)(a) of the Patent Act is extinguished once the patent issues.  The Court reasoned that the concept of abandonment under s. 73(1)(a) operates during the prosecution of the application only.  The FCA further stated that relying on s. 73(1)(a) post-issuance to challenge the validity of a patent would allow an issued patent to be subject to retroactive scrutiny by the courts in relation to submissions made by a patent applicant to the Patent Office during prosecution.  The Court explained that: “[i]t is for the Commissioner of Patents and not the courts to determine if those submissions were made in good faithin response to a requisition from an examiner”.

The FCA has now established its position on this point by concluding its analysis with the following reference to these cases:

“To the extent that the Federal Court decisions in G.D. Searle and Lundbeck can be interpreted as standing for the proposition that paragraph 73(1)(a) can be relied upon for the purpose of attacking the validity of a patent, they should not be followed.”