The Supreme Court of Canada today released its unanimous decision in AstraZeneca Canada Inc. v. Apotex Inc. (esomeprazole), 2017 SCC 36. The decision clearly and soundly rejects the “promise doctrine” that has developed in the jurisprudence of the Federal Courts of Canada since approximately 2005.
The promise doctrine has its roots in English law, dating back to the time when the grant of patents was an exercise of Royal prerogative. At that time, the courts did not want to second guess whether the Crown would have granted the monopoly of the patent had some utility promised by the patentee not been met. However, as Professor Norman Siebrasse has argued in his article “The False Doctrine of False Promise” (2013), 29 C.I.P.R. 3, which was quoted from by the Court, this doctrine would appear to be inapplicable in our current legislative regime in which the grant of a patent is not a discretionary act as long as the statutory requirements are met. Indeed, the doctrine has been overruled by statute in the United Kingdom. However, the doctrine has been heavily utilized by the Canadian Federal Courts over the preceding decade to invalidate a number of highly valuable pharmaceutical patents in a series of controversial decisions (see, for example, our earlier article here).
This decision from Canada’s highest court is favourable for patentees and those seeking patent protection in Canada, as it brings clarity to our law and helps to ensure that the validity of Canadian patents will be measured against a standard that is consistent with that applied in other countries.