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Erwin Schultz, Certificate in Law student and member of the Intellectual Property Group, talks about the criteria for patentability and focuses on utility in his latest blog.
There are four basic criteria for patentability: novelty, inventiveness, utility, and statutory – the subject matter must be patent eligible. The present blog will briefly address the utility criteria. Subsequent blogs will address the criteria of inventiveness, and statutory subject matter.
An invention within the meaning of Section 2 of the Patent Act must possess utility. Utility can be either demonstrated or soundly predicted as of the Canadian filing date. Utility in the sense of the Patent Act can be considered as a requirement for an invention to be operable, controllable, and reproducible such that the objectives of the invention are predictably achieved. The question whether an invention has utility will typically be answered in the affirmative if it is capable of a practical purpose or can achieve an actual result.
Although utility can be demonstrated by commercial success, it only requires that the invention be directed to a practical use and that it does what is indicated in the patent. The mechanism underlying an invention's function, or mode-of-action in the case of new molecular entities, does not need to be disclosed in the patent. Of note, an inventor does not have to have created the product of the invention, however the description of the patent must disclose an actual way to do so.
The utility of an invention can be established by sound prediction whereby the utility can be predicted in advance of complete testing. Sound prediction requires: (1) a factual basis for the prediction; (2) an articulable and sound line of reasoning from which the desired result can be inferred from the factual basis; and (3) a proper disclosure.