Responding To Canadian Patent Office Objections: Proof Of Utility

This is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed.

The Objection

In a typical objection, the patent examiner asserts that the claimed composition of matter, while novel and non-obvious, cannot be patented because the application's description fails to prove the utility of all claimed embodiments. The examiner usually will rely on:

• the definition of "invention" in section 2 of the Patent Act as the statutory basis for the objection.
• recent case law, mainly from abbreviated proceedings under the Patented Medicines (Notice of Compliance) Regulations, suggesting that utility of a claimed composition of matter must be proved in the specification, by demonstration or sound prediction, whether or not that utility is claimed.