Form and Function in the Law of Utility: A Reply to Gold & Shortt
Canadian Intellectual Property Review, Forthcoming
60 Pages Posted: 28 Sep 2014 Last revised: 15 Nov 2017
Date Written: September 26, 2014
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 & 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, as 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.
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