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3 Cybaris 1 (2012)


The requirement that an invention have utility is one of the most fundamental of the patent laws. In the United States, for example, the concept of utility is rooted in the Constitution: Article 1, Section 8, gives Congress the power to grant exclusive rights to inventors in order “[t]o promote the progress of Science and useful Arts.” Other jurisdictions recognize utility in the form of inventions that have “industrial applicability” or are “capable of exploitation in industry,” with all of these terms and phrases generally viewed as being synonymous.

Historically, nearly every jurisdiction has excluded some type of invention from patentability as lacking utility. A common and enduring utility-based exclusion is the perpetual motion machine, with the justification being scientific: because perpetual motion is not physically possible, an invention which claims such a feature cannot in fact work and therefore fundamentally lacks utility. Jurisdictions also make exclusions on policy grounds. In Europe, for example, methods of treating human and animal bodies are not patentable, but the justification for doing so, which previously was based on lack of industrial applicability, is now expressly linked to public health policy. In an ever-more global economy, inventions are at the heart of commercial transactions that know no geographic boundaries and are increasingly valued for their job and wealth creation. Obtaining patent protection in multiple jurisdictions therefore is increasingly common. At least to reduce costs and increase efficiency, patent owners, policymakers and practitioners alike have sought increased inter jurisdictional cooperation and patent law harmonization in the patent examination and granting process.

Recent publications, however, have identified a developing trend in Canada in which Canadian courts and the Canadian Intellectual Property Office are interpreting and applying the historically well-settled and generally harmonized utility requirement in a new and different way, in particular with respect to patents for pharmaceutical products. As a result, applicants for Canadian patents must meet conditions and overcome hurdles not required by other major patent offices.

This article will compare Canada’s implementation and treatment of the utility requirement with the implementation and treatment practiced in the United States and Europe—two jurisdictions that represent prevailing approaches to utility and also constitute a major share of the world’s patenting activity. The article will first examine the statutory and judicial situation in each of the jurisdictions, including a review of the major international treaties and agreements to which each is subject. It will then present a case study that looks at the judicial challenges brought against various members of a single patent family in the United States, Europe, and Canada, and compare the results of those challenges. This analysis, we believe, reveals that the recent shift in Canada’s approach to the utility requirement conflicts with international norms and thus presents implications for patentees, patent law harmonization, and international treaty obligations.


This article is co-authored by Amy M. Salmela and Justin N. Woo.