Sound Prediction: Insights From Recent Patent Appeal Board Decisions

Patent applicants in the life sciences industry often find themselves under pressure to file patent applications before extensive exemplary data has been generated. In Canada, prosecuting such applications can be challenging as the Canadian Intellectual Property Office (CIPO) takes the position that the application should include working examples representative of the scope of the claims and that post-filing data cannot be relied upon to support utility. Three recent Patent Appeal Board decisions (Commissioner's Decision Nos. 1315, 1319 and 1323), however, confirm that such challenges are not insurmountable in view of the uniquely Canadian doctrine of "sound prediction."

Under Canadian law, if the utility of a claimed invention has not been demonstrated at the time an application is filed, then the utility must have been "soundly predicted." For a prediction to be "sound": (1) there must be a factual basis for the prediction; (2) the inventor must have at the date