Form and Function in the Law of Utility

I have criticized the promise doctrine, both in this blog and in my article “The False Doctrine of False Promise” (2013) 29 CIPR 3. In their article published in the most recent issue of the CIPR, “The Promise of the Patent in Canada And Around the World” 30 CIPR 35, Richard Gold & Michael Shortt defend the promise of the patent. My reply article, “Form and Function in the Law of Utility: A Reply to Gold & Shortt,” has been accepted by the CIPR. A good draft, subject to copy-editing, is available from SSRN. Here is the abstract:

In a recent article, “The Promise of the Patent in Canada And Around the World,” Richard Gold and Michael Shortt argue that the law relating to the controversial “promise” branch of the Canadian law of utility is justifiable as a matter of policy, that it is long established in Canadian law, and that promises are enforced in a number of other jurisdictions. In this article I argue that Gold & Shortt fail to appreciate the functional distinction between the two branches of the utility requirement, which are consequently conflated throughout their article. The points they make in respect of the promise doctrine actually relate, for the most part, to the traditional “scintilla” branch of the law of utility, though they also conflate the promise of the patent with obviousness, sufficiency and overbreadth. This article uses Gold & Shortt’s article as a foil to explore the functional nature of the two branches of the law of utility and the differences between them. I will also contrast utility with sufficiency, obviousness and overbreadth.