Canada as a patent outlier — Canadian Lawyer

J. Bradley White

Sept. 1, 2017

The Supreme Court of Canada’s decision in AstraZeneca v Apotex, 2017 SCC 36 (AstraZeneca), which held that the so-called “promise doctrine” is not the correct method to determine whether the utility requirement in the Patent Act has been met, is “very significant,” Osler partner Bradley White tells Canadian Lawyer. In her article, author Elizabeth Raymer examines how the decision brings Canada in line with other industrialized nations, and could even enhance the country’s position as a strong ecosystem for patent applications. With the NAFTA renegotiations under way, Bradley, the Chair of Osler’s National Intellectual Property Practice Group, says this decision is of particular significance.

“The promise doctrine was seen as a thorn, an issue that would come up when NAFTA was renegotiated,” Bradley tells Canadian Lawyer. “This Supreme Court decision was watched with great interest both in and outside of Canada. It’s a very significant decision.”

Bradley also tells Canadian Lawyer he believes Canada’s IP law “was already robust before the SCC decision in AstraZeneca.” He says that with the sheer size of the global pharmaceutical industry, “they weren’t going to not file for patent applications in Canada. And so I’m not sure the promise doctrine was going to stop pharmas from filing … in Canada,” although there was “no doubt that patents would be held to a dramatically different standard in Canada.”

Bradley adds that “not having the promise doctrine . . . is one less mechanism” available in challenging the patent under 27(3) of the Patent Act, which identifies an invention’s required specifications.

For more information on this decision and the implications, read Elizabeth Raymer’s article “Canada as a patent outlier” in Canadian Lawyer.