The Canadian Intellectual Property Review (CIPR) is a double-blind peer reviewed journal. It is sent to over 1,800 IPIC members at no cost and can be purchased by non-members for a fee. If you would like to browse the articles included in the CIPR, please consult our database below.
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Canadian Intellectual Property Review
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Unpacking the "Promise of the Patent"
Issue: Volume 28 no 2
Author(s): Andrew Bernstein and Yael Bienenstock
Abstract:
In determining whether the utility requirement for validity is satisfied, courts must answer the question, what does the patent promise the invention will be useful for? Answering this question has a dramatic effect on patent validity. However, the case law lacks a coherent set of principles to explain how the courts should discern the “promise of the patent.” In this article, we suggest that the following principles will help lead to more consistency and predictability in the courts’ determination of promise: (1) promise should be approached as an aspect of the inventive concept of the claim; (2) promise should be considered on a claim-by-claim basis; (3) the determination of promise should adhere to the principles of claim construction; (4) promise, and whether it has been met, must be analyzed using the same information (in the patent or known to the skilled person); and (5) experts can assist by explaining the perspective of the skilled person. We suggest that adopting these principles would lead the courts to analyze the promise of the patent in a more consistent way, leading to outcomes that are both more predictable and fairer to both the patentee and the public.
