of sound accepts the fact that there is further work to “doctrine prediction” be done IF THE PRODUCT DOES NOT FUNCTION AS PREDICTED THEN IT THE PATENT IS INVALID (Apotex v Wellcome) X v Commissioner of Patents Facts Guy tries to patent a he says he can demonstrate that it works but ‘death ray’; been able to test it because he needs access to nuclear facilities hasn’t Held Has not demonstrated that the invention was useful, since it was inoperable for the purpose for which it was designed He actually made it and it is not clear whether it actually works it is mere hasn’t – prediction without any supporting evidence TEST: Depends on whether following the directions of the specification, the effects which the patentee professed to produce can be, in fact, produced. MUST either demonstrate the utility or give a that it will work “sound prediction” Courts are now using this against patentees who claim promised utilities and then cannot later actually demonstrate that Doctrine of Sound Prediction new use for old compound Apotex v Wellcome Foundation: Facts AZT: invented back in the day but its usefulness for HIV was not known until after the original patent expired; sought a for an old compound ‘new use’ Filed patent application once testing for retroviral use had begun on mice and human cell lines but no tests on humans yet Held When the application was filed Wellcome had sufficient information about AZT and its activity against HIV to make a sound prediction that it would be useful for treating AIDS in Humans Human cell line and mouse data A theory with some science about how it might work This together was enough to satisfy the sound prediction requirements Requirements for Sound Prediction must be a factual basis for the prediction inventor must have an articulable reasoning from which the desired result can be inferred E.g. reasoning grounded in the of chemical (Monsanto “architecture compounds” v Burton Parsons) must be proper disclosure
“doctrine of sound prediction” accepts the fact that there is further work to be done IF THE PRODUCT DOES NOT FUNCTION AS PREDICTED THEN IT THE PATENT IS INVALID (Apotex v Wellcome) X v Commissioner of Patents Facts Guy tries to patent a ‘death ray’; he says he can demonstrate that it works but hasn’t been able to test it because he needs access to nuclear facilities Held Has not demonstrated that the invention was useful, since it was inoperable for the purpose for which it was designed He hasn’t actually made it and it is not clear whether it actually works – it is mere prediction without any supporting evidence TEST: Depends on whether following the directions of the specification, the effects which the patentee professed to produce can be, in fact, produced. MUST either demonstrate the utility or give a “sound prediction” that it will work Courts are now using this against patentees who claim promised utilities and then cannot later actually demonstrate that Doctrine of Sound Prediction Apotex v Wellcome Foundation: new use for old compound Facts AZT: invented back in the day but its usefulness for HIV was not known until after the original patent expired; sought a ‘new use’ for an old compound Filed patent application once testing for retroviral use had begun on mice and human cell lines but no tests on humans yet Held When the application was filed Wellcome had sufficient information about AZT and its activity against HIV to make a sound prediction that it would be useful for treating AIDS in Humans Human cell line and mouse data A theory with some science about how it might work This together was enough to satisfy the sound prediction requirements Requirements for Sound Prediction must be a factual basis for the prediction inventor must have an articulable reasoning from which the desired result can be inferred E.g. reasoning grounded in the “architecture of chemical compounds” (Monsanto v Burton Parsons) must be proper disclosure