snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Responding to Canadian Patent Office Objections: Proof of Utility

Section 2 of the Patent Act

Posted in Patents
Lisa Melanson

This is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed.

The Objection

In a typical objection, the patent examiner asserts that the claimed composition of matter, while novel and non-obvious, cannot be patented because the application’s description fails to prove the utility of all claimed embodiments. The examiner usually will rely on:

  • the definition of “invention” in section 2 of the Patent Act as the statutory basis for the objection.
  • recent case law, mainly from abbreviated proceedings under the Patented Medicines (Notice of Compliance) Regulations, suggesting that utility of a claimed composition of matter must be proved in the specification, by demonstration or sound prediction, whether or not that utility is claimed.

Although section 2 governs the nature of the claimed invention, the objection itself relates to an alleged failure of the disclosure.

The Statutory Provision

Section 2 of the Patent Act defines the nature of a claimed invention as follows:

2. “invention” means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement [thereof].

The term “useful” in this definition provides the sole basis for the Canadian requirement that a claimed invention have a utility. This definition is modeled on 35 U.S.C. §101, which establishes the utility requirement in the US.

Section 2 of the Patent Act must be read with the statutory requirements for patent applications in section 27, including the requirement for a written description:

27. (3) The specification of an invention must (a) correctly and fully describe the invention and its operation or use as contemplated by the inventor.

Addressing the Objection

Here are some reasons why you could consider arguing in traverse of a section 2 objection to the claimed composition of matter on the basis that its utility has not been proved in the specification:

  • The Patent Act does not now require, and never has required, proof of utility in the specification.
    • The patentability requirements for the contents of applications are found in section 27 of the Patent Act, not section 2 (which relates to the nature of the claimed invention).
    • Section 27 requires a description of the claimed invention. This requirement ensures that inventors do not patent first and litigate later.
    • As in the US, neither a description nor proof of utility is prescribed by statute. During invalidity proceedings at court, though, a patentee can be required to provide evidence of utility.
    • The utility threshold is minimal. Long-standing jurisprudence teaches that a “mere scintilla” of usefulness, apparent to a skilled person reading the specification, satisfies the utility requirement in section 2.
    • The Patent Office bears the burden of establishing grounds of objection. For lack of utility, the Patent Office would have to demonstrate, through objective evidence, that the skilled person would fail to understand that the claimed invention has any utility.
    • Binding Supreme Court of Canada precedent distinguishes the requirement for a claimed invention to have a utility from the requirement that a specification describe the claimed invention.
  • The Supreme Court more recently considered the notion of sound prediction in the context of establishing possession of the claimed invention (date of invention) under the old first-to-invent regime.
    • Inventors establish possession at the time of filing by providing an enabling disclosure of the claimed invention in accordance with section 27.
    • Where the gravamen of the claimed invention is a new use, rather than a new composition of matter, it may be reasonable to require the specification to include further details of use in order to satisfy the written description requirement and establish possession.
    • The objection disregards the claims, which protect a new composition of matter, not a new use.
  • The objection relies on a requirement for patentability that exceeds the statute.
    • The Patent Office lacks statutory authority to enforce patentability requirements not found in the Patent Act. Subsection 27(1) mandates the Patent Office to grant a patent once the requirements in the Act are met.
    • The cases on which the Patent Office relies do not appropriately distinguish the statutory requirements for specifications from the statutory requirements for claimed subject matter.
    • Creation of a non-statutory patentability requirement misleads inventors, who pay Patent Office fees with an expectation that a patent will issue if the statutory requirements alone are met.
  • The objection is inconsistent with the Canadian patent system.
    • Canada is a jurisdiction of peripheral claiming, not central claiming. Disclosure of all claimed embodiments is not required.
    • By focusing on the disclosure and not the claims, the objection violates the public bargain, which only requires an applicant to describe the subject matter defined by the claims in exchange for patent protection.
    • The Patent Act exists to promote innovation in the useful arts through disclosure. By refusing the patent, the Patent Office hands the inventors’ disclosure to their competitors, who benefit from a windfall. This could discourage patent filings in Canada, thereby stifling innovation, research, and disclosure.
    • Canadian law invalidates a patent claim if a prior reference provides an enabling disclosure of the claimed invention without proof of utility. There is no basis in the Act for refusing a patent on grounds more stringent than those required of the prior art.

Next up: Responding to an objection to the claimed invention under s. 28.2 of the Patent Act on the basis that it is inherently anticipated.

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