The Pitfalls of "the Promise of the Patent"

Abstract:

Recent jurisprudence has created a significant gap between the statutory requirements for the utility of the patent and the judicial requirements for the promise of the patent. Several high-profile decisions of the Federal Court of Canada and Federal Court of Appeal have invalidated patents for lack of utility because the patent did not fulfil the court’s interpretation of what the patent promised. Although these patents had a scintilla of utility, they were still invalid for lack of utility because they did not live up to the promise of the patent. This article addresses the development of the doctrine of utility and the promise of the patent, issues arising from the modern approach to evaluating the promise of the patent, and provides suggestions for patent drafters to eliminate any potential pitfalls created by the current patent law regime.