Supreme Court Clarifies Patent Doctrine of Sound Predictions
On December 5, 2002, the Supreme Court of Canada delivered its reasons in Apotex Inc. et al. v. The Wellcome Foundation Ltd. et al., a case involving the validity of a patent claiming the compound AZT for use in the treatment and prophylaxis of HIV in human beings. This case raised the question of whether a valid patent can issue for an "invention" that is a mere speculation or guess at the time it is made. In its decision, the Court confirmed that the utility of a patentable invention must either be known at the time the patent application is first filed (e.g. by constructing the invention and observing its utility) or be soundly predictable in the then state of the art. Mere speculations or guesses, no matter how prophetic, are not patentable even if they turn out to have been correct.