SCC Grants Leave to Consider the Patent “Promise Doctrine”

On March 10, 2016, the Supreme Court of Canada (SCC) allowed AstraZeneca’s application to appeal from the Federal Court of Appeal (FCA) decision in AstraZeneca Canada Inc v Apotex Inc, 2015 FCA 158 (SCC Case No. 36654). The SCC is expected to address issues regarding the assessment of the promised utility of a patent (the so-called “Promise Doctrine”), which has been central to a number of recent pharmaceutical patent decisions.

In the decision under appeal, the FCA affirmed the Federal Court’s decision finding that AstraZeneca’s esomeprazole patent (CA Patent No. 2,139,653) was invalid for failing to meet the promised utility (2014 FC 638, previously reported in the E-TIPS® Newsletter).  The FCA confirmed that different claims may have different promises based on a proper construction of the claims.  The FCA also rejected AstraZeneca’s argument that there must be a unitary, harmonious understanding of the essential elements of the claim, inventive concept and utility.  Past E-TIPS® Newsletter commentary on the FCA decision can be found here.

The SCC hearing of this appeal is tentatively scheduled for November 8, 2016.