Form and Function in the Law of Utility: A Reply to Gold & Shortt

Abstract:

The “promise of the patent” is a controversial branch of the Canadian law of utility, under which a patentee who “promises” a specific result may be held to a higher standard for utility than is required by the Patent Act. In a recent article, “The Promise of the Patent in Canada and Around the World,” Richard Gold and Michael Shortt argue that the promise doctrine is justifiable as a matter of policy, that it is long established in Canadian law, and that functionally equivalent promises are similarly enforced in a number of other jurisdictions. In this article, I provide a functional comparison of the promise doctrine and the traditional “scintilla” branch of the utility requirement, which shows that Gold and Shortt’s analysis erroneously conflates these doctrines. I also show that, on a functional analysis, the promise doctrine is not required to police selection patents, because that function is served by the inventive step requirement, and I explore the functional distinction between the promise doctrine and the requirement of sufficient disclosure.