Presumption of validity; utility in patent law in Canada

This page covers both the Presumption of Validity and Utility in Canadian Patent Law.

The Presumption of Validity

The presumption of validity refers to the fact that, once a patent has been issued, courts will presume that it is valid. This means that any party challenging the validity of a patent bears the onus of proving its case.

In Canada

Section 43(2) of the Patent Act states the presumption as:

After the patent is issued, it shall, in the absence of any evidence to the contrary, be valid and avail the patentee and the legal representatives of the patentee for the term mentioned in section 44 or 45, whichever is applicable.

In Canada, the standard of proof required to rebut the presumption of validity has not been clearly articulated. The Federal Court of Appeal has endorsed both the idea that the presumption could be rebutted by any believable evidence (the bursting bubble approach) and the idea that the particular circumstances would determine how difficult the standard would be to overcome. Ultimately, the court applied the civil law standard of the balance of probabilities.

In the United States

The American presumption can be found in the Patent Act
Patent Act of 1952
The U.S. Patent Act of 1952 clarified and simplified existing U.S. patent law. It also effected substantive changes, including the incorporation of the requirement for invention and the judicial doctrine of contributory infringement The U.S. Patent Act of 1952 clarified and simplified existing...

at 35 USCS § 282:

A patent shall be presumed valid … The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

Rebutting the presumption of validity in the United States requires “clear and cogent evidence.” The Supreme Court has recently confirmed this standard, noting that the effect of the presumption of validity is more than procedural and that it encompasses the burden of persuasion it carried at common law.

Commentary

Although patents are examined before they are granted, the initial screening is not rigorous. This is justified, in part, by the volume of patent applications and the relatively few patents that are contested. The ease of initially obtaining a patent and the fact that this process is not adversarial may warrant a more thorough analysis of the validity of a patent if it is challenged, in which case the Canadian approach to the presumption of validity may be preferred.

Utility

Inventions must be useful, in addition to novel and non-obvious

Novelty and non-obviousness in Canadian patent law

A valid patent in Canada needs to be new and inventive. In patent law, these requirements are known as novelty and non-obviousness. A patent cannot be granted in the given invention without meeting these basic requirements. These requirements are borne out of a combination of statute and case...

, in order to be patented.

General Principles

Although utility can be demonstrated by commercial success, it only requires that the invention is directed to a practical use and that it does what is indicated in the patent. The mechanism underlying an invention's function does not need to be disclosed in the patent. If a mechanism is proposed in the patent but is subsequently disproven, the patent is not invalidated.

An invention is useful if it does what it promises; following the directions should result in the desired effect. The inventor does not have to have created the product of the invention, but the specifications must disclose an actual way to do so.

A patent is addressed to a person skilled in the art, and any prior art and knowledge that such a person would have can be taken into consideration when the patent is being interpreted by the courts. If a patent’s scope is so broad that a person skilled in the art could follow its specifications and not get the useful result, the invention is not useful.

To be valid, a patent’s usefulness must be established, wither by demonstration or by sound prediction, at the time of the patent application. Any evidence of utility after this date is irrelevant, regardless of when the patent’s validity is challenged. Later proof of an invention’s inutility can be used to invalidate a patent.

Sound Prediction

The utility of an invention can be established by sound prediction where “utility can be predicted in advance of complete testing." This is a question of fact, and there are three prongs to the doctrine:

There must be a factual basis for the prediction.
The inventor must have and articulable and sound line of reasoning from which the desired result can be inferred from the factual basis.
There must be proper disclosure.

Rationale

The grant of a patent gives the inventor a monopoly in the market for its product. This monopoly is granted in exchange for the disclosure of the invention which can be further developed by society. The requirement that the invention is useful ensures that society receives accurate and complete disclosure.

That a patent does not have to be economically useful is justified by the fact that these kinds of discoveries may lay the foundaiton for more profitable discoveries.

The basis for the doctrine of sound prediction is the expedited disclosure of inventions. By ensuring that these inventions are not speculation or misinformation, the public domain remains uncluttered.