THE ‘PROMISE DOCTRINE’ WILL COME UP IN TRUMP’S NAFTA TALKS. WE HAD BETTER HAVE AN ANSWER.

even get to Eli Lilly’s claim that the promise doctrine offends Canada’s intellectualproperty obligations under NAFTA.

The promise doctrine is judge-made law, but even in a common law jurisdiction like ours, the tribunal reasoned, courts are clearly an arm of government and their decisions could be open for review. Intellectual-property law is the most international of laws; Canadian laws should be consistent with other countries’ approaches.

The promise doctrine is sure to come up in the NAFTA renegotiations President Donald Trump plans. We had better have an answer, and the only reasonable one is an end to its ex- terpretative difficulties, but it would solve the present problem.

Alternatively, the case of AstraZeneca v. Apotex will soon be decided by the Supreme Court of Canada. This case provides the court an opportunity to clarify the promise doctrine, and it should take the opportunity. The Supreme Court can right the wrongs that courts, including itself, have wrought.

The promise doctrine seems to have grown out of the “sound prediction” doctrine. Sound prediction provides a secondary basis for patent-holders to satisfy the requirement for inventions to be useful. Sound prediction helps when utility hasn’t yet been fully demonstrated in fact (for example, “we believe this could cure rashes”).

From this sensible beginning the promise doctrine grew out of reasonable bounds. First, it led to courts seeking promises in statements in patents that may not have been intended as sound prediction; indeed, to potentially base them on any statement in the patent disclosure (“could cure rashes including poison ivy, heat rash and contact dermatitis”). Second, it led to the invalidation of patents where the scope of the described promise proved not to have been fully realized (“Oops! Turns out it doesn’t cure poison ivy”). Yet in this example the patent still meets the utility requirement (because it cures rashes other than poison ivy).

The promise doctrine is a long way from the “mere scintilla” of utility Canada nominally requires, and other countries actually require. A permissive doctrine has been turned on its head to invalidate patents instead.

The promise doctrine has corrupted Canadian patent law and irritated international relations. By legislation or by judicial intervention, it is time to excise it and return to a more sensible understanding of utility.