09 July 2017

Canada Rightly Ditches the ‘Promise Doctrine’ for Utility, Australia Should Follow Suit

CanadaCanada is not a republic.  It is, like Australia, a card-carrying, fully paid-up, current member of the British Commonwealth.  Canada’s Head of State is the same nonagenarian resident of ‘Buck House’ who reigns over us here in Australia.  And while Australia and Canada thus have much in common historically, like most siblings we are growing apart as we grow older.  One further step in that direction was taken by the Canadian Supreme Court on 30 June 2017, when it banished the so-called ‘Promise Doctrine’ of inutility from Canadian patent law: AstraZeneca Canada Inc v Apotex Inc 2017 SCC 36.  In my opinion, Australia should do likewise, either via a similar pronouncement from the High Court or, failing that, through legislation.

The Australian Patents Act 1990 requires, in section 18(1)(c) and 18(1A)(c), that an invention must be ‘useful’ in order to be patentable.  This is also commonly known as the requirement for ‘utility’.  Failure to meet this requirement, i.e. inutility, is therefore a ground upon which a patent application may be rejected, or a patent revoked.  There was originally nothing in the Patents Act to explain exactly what is meant by ‘useful’, although since commencement of the Raising the Bar reforms on 15 April 2013 section 7A has specified that, aside from anything else it may mean, ‘an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification’.

Left to their own devices for an extended period of time, the English courts – and subsequently those of countries, such as Australian and Canada, that inherited their legacy – determined that one of the requirements for an invention to be useful is that it should fulfil any promise that may be made for it based upon a reading of the patent specification as a whole.  Furthermore, although there is arguably some inconsistency in the authorities on this point, if the specification makes multiple promises of utility then a claim will generally be invalid if the invention that it defines does not fulfil all of those promises.  In Australia, this principle was most recently demonstrated in Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588, where Justice Jessup found all claims of an opposed patent application to be invalid for lack of utility because none would deliver each and every one of six advantages listed in the specification, notwithstanding that a number of the claims would deliver one or more of those stated advantages (see Utility Futility? Usefulness of Inventions and ‘Fatal’ Promises Made in Patent Specifications).

This version of the utility requirement is, in my view, self-evidently absurd.  For one thing, it means that a patent having a specification which makes no explicit statement of the advantages said to be provided by invention is less likely to be invalid for lack of utility than one which includes one or more express ‘promises’.  Additionally, where multiple uses are disclosed in a specification, there is absolutely no sound basis – and certainly no basis in the words of the Patents Act itself – for finding an otherwise valid claim to be invalid simply because, although it is useful, it is not useful for all of the purposes that the inventor has chosen to disclose.

Or, as the Canadian Supreme Court has now wisely stated:

The Promise Doctrine risks, as was the case here, for an otherwise useful invention to be deprived of patent protection because not every promised use was sufficiently demonstrated or soundly predicted by the filing date. Such a consequence is antagonistic to the bargain on which patent law is based wherein we ask inventors to give fulsome disclosure in exchange for a limited monopoly.

Now that our Canadian friends have demonstrated the ease with which this particular tie with the Mother Country can be cut, I can think of no good reason why Australia should not do likewise. 

Promise Doctrine: Canada vs Australia

The now-defunct Canadian Promise Doctrine differs slightly in its formulation from its Australian equivalent (the term ‘Promise Doctrine’ is not used in Australia – it is simply an accepted element of the judge-made law relating to utility).  As it was developed by the Canadian courts, assessment of utility under the Promise Doctrine involves (see, e.g., the Canadian Supreme Court decision at [31]):
  1. reading the specification as a whole (including both the description and claims) to identify the promise(s) made for the invention;
  2. assessing whether the claimed invention fulfils the promise(s), by demonstration or sound prediction; and
  3. if any one of the promises is not fulfilled, then the patent is invalid.
In Australia, the most recent statement by a superior court of the relevant principles is to be found in Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29 at [121], where the court outlined the following process:
  1. first, determine the promise of the invention derived from the whole of the specification; and
  2. second, assess whether, by following the teaching of the specification, the invention, as claimed in the patent, attains the result promised for it by the patentee.
Two differences between the Canadian and Australian formulations may be noted.  First, the Australian courts refer to ‘following the teaching of the specification’, whereas the Canadian courts speak of fulfilling the promise ‘by demonstration or sound prediction’. Second, under the Canadian Promise Doctrine the entire patent may stand or fall on the outcome of the court’s assessment whereas in Australia it is clear that the validity of each claim must be considered separately.

I doubt that there is, in practice, much difference between ‘following the teaching’ and ‘by demonstration or sound prediction’.  The evaluation is, in both cases, to be conducted through the eyes of the person skilled in the relevant art who would be looking for some basis in what is disclosed (e.g. a demonstration by experiment or a prediction based upon sound technical or scientific principles) to determine whether or not the promise of the invention is fulfilled.

As far as I can ascertain, the second distinction results from differences between the statutory schemes in Canada and Australia.  The utility requirement in Canada arises from the definition of ‘invention’ in section 2 of the Canadian Patents Act as ‘any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter’.  In Australia, however, the requirement arises in section 18(1)(c), which expressly requires that ‘the invention, so far as claimed in any claim … is useful’.

Generally speaking, however, it is clear that the similarities between the Canadian Promise Doctrine and its Australian counterpart exceed the differences.

Common Origins of the Promise Doctrine

The above similarities between Australia and Canada are unsurprising in view of the common origin of the relevant legal principles.  As the Canadian Supreme Court explained (at [34]):

The [Promise] Doctrine can be traced back to the early 20th century in the United Kingdom, specifically in Hatmaker v. Joseph Nathan & Co. (1919), 36 R.P.C. 231 (H.L.), and Alsop’s Patent Re (1907), 24 R.P.C. 733 (Ch.). The doctrine in England was referred to as the “False Promise Doctrine”.

Both Alsop’s Patent and Hatmaker are cited in the discussion of utility in Bodkin, C, Patent Law in Australia, Law Book Co, 2008, at pp 265-266, which was in turn cited as ‘a valuable treatment of the subject’ in Ronneby Road ([2016] FCA 588 at [73]).

However, the issues of expressly made promises and multiple promises do not seem to have been addressed in higher Australian authorities.  As I noted in my article on the Ronneby Road decision, the court there ultimately relied heavily upon a decision of the NSW State Supreme Court – a rare venue for a patent case – in concluding that the claimed invention must meet all six promises made in the specification to avoid being invalid for lack of utility.

The Canadian Court’s Reasoning

The Canadian Supreme Court noted (at [34]) that the ‘False Promise Doctrine’, as formulated in cases such as Alsop’s Patent and Hatmaker, arose at a time when a patent was in the nature of a grant from the Crown as an exercise of the Royal prerogative.  It was therefore argued that where the Crown had been deceived in the grant, an objection could be made.  The Court thus concluded (at [35]) that ‘the origin and justification of the promise doctrine in English law was the “unwillingness of the courts to second-guess the Crown in the exercise of its discretion”.

However, the relevant requirements for the grant of a valid patent have since been codified in the Canadian Patent Act, and the Court found that:

[36] This doctrine, however, is unsound. It is an interpretation of the utility requirement that is incongruent with both the words and the scheme of the Patent Act .

[37] The Promise Doctrine is excessively onerous in two ways: (1) it determines the standard of utility that is required of a patent by reference to the promises expressed in the patent; and (2) where there are multiple expressed promises of utility, it requires that all be fulfilled for a patent to be valid.

Of course, a patent applicant may ‘overpromise’ in a specification in an effort to persuade a decision-maker or competitor that the invention is worthy of a patent and that the claims are valid.  The Canadian Supreme Court recognised that overpromising is therefore a ‘mischief’, but concluded that it was not the role of the utility requirement to address this particular concern, explaining (at [46]) that:

The scheme of the Act treats the mischief of overpromising in multiple ways. There are consequences for failing to properly disclose an invention by claiming, for instance, that you have invented more than you have. A disclosure which is not correct and full, or states an unsubstantiated use or operation of the invention, may be found to fail to fulfill the requirements of s. 27(3) . An overly broad claim may be declared invalid; however, under the operation of s. 58 of the Patent Act , remaining valid claims can be given effect. As well, this mischief may result in a patent being void under s. 53 of the Act, where overpromising in a specification amounts to an omission or addition that is “willfully made for the purpose of misleading”.
With regard to multiple promises, the Court recognised (at [49]) that the ‘single subject matter’ of an invention can be described in many ways, and different facets can be claimed via multiple claims linked by a ‘single general inventive concept’, proceeding to explain that ‘every invention pertains to a single subject-matter, and any single use of that subject-matter that is demonstrated or soundly predicted by the filing date is sufficient to make an invention useful’.

As for the true purpose of the utility requirement in Canadian patent law, the Court concluded that:

[56] The utility requirement serves a clear purpose. To avoid granting patents prematurely, and thereby limiting potentially useful research and development by others, the case law has imposed a requirement that an invention’s usefulness be demonstrated or soundly predicted at the time of application, rather than at some later point. This ensures patents are not granted where the use of the invention is speculative. What matters is that an invention “be useful, in the sense that it carries out some useful known objective” and is not merely a “laboratory curiosity whose only possible claim to utility is as a starting material for further research” (Re Application of Abitibi Co. (1982), 62 C.P.R. (2d) 81, (Patent Appeal Board and Commissioner of Patents), at p. 91).

[57] The application of the utility requirement in s. 2 , therefore, is to be interpreted in line with its purpose — to prevent the patenting of fanciful, speculative or inoperable inventions.

Conclusion – Australia Should Follow Canada

The Australian version of the ‘Promise Doctrine’ clearly suffers from the same problems as its Canadian counterpart.  In Ronneby Road, for example, a number of claims were found to be novel and inventive, and all were found to be fairly based on the subject matter disclosed in the description.  Yet every single claim directed to a perfectly useful mechanical arrangement or protecting excavating equipment from wear was found to be invalid for lack of utility because each claim fulfilled only some, but not all, of the six promises identified in the patent specification.  Just as the Canadian Supreme Court stated, ‘such a consequence is antagonistic to the bargain on which patent law is based wherein we ask inventors to give fulsome disclosure in exchange for a limited monopoly.’

Also as in Canada, there are other provisions of the Australian Patents Act that are more appropriately applied to address concerns about ‘overpromising’.  Section 40 performs a similar function to Canada’s section 27, requiring a sufficient description of the invention to enable a relevantly skilled person to put it into effect, and restricting the scope of the claims to what is justified by the disclosure.  Section 138(3)(d), which is somewhat analogous to subsection 53(1) of the Canadian Act, provides that an Australian patent is invalid, and liable to be revoked, if it ‘was obtained by fraud, false suggestion or misrepresentation’.

In addition, the recently-added statutory definition of utility in section 7A essentially addresses the primary function of the utility requirement identified by the Canadian Supreme Court, i.e. ‘to prevent the patenting of fanciful, speculative or inoperable inventions’.

In Australia, as in Canada, there is no place for a judge-made requirement to satisfy ‘promised utility’, especially if this means that each claim must fulfil every one of multiple promises identified in the patent specification.  The Patents Act 1990 clearly sets out the various statutory requirements for a valid patent.  To the extent that there may have been a role for a ‘false promise doctrine’ in the first half of the 20th century, this is no longer the case.  This vestige of an earlier time, and different statutory scheme, should be overruled or legislated away.

A decision of the Canadian Supreme Court on a matter grounded in exactly the same archaic English authorities that continue to hold sway in Australia ought rightly to be regarded as strongly persuasive next time the issue comes before an Australian superior court.  And with Ronneby Road itself currently awaiting a judgment on appeal to a Full Bench of the Federal Court of Australia, an opportunity for the High Court to take on the question of promised utility could be just around the corner.


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