Archive for December, 2012

IP & Investment: Eli Lilly Claims Utility Can Be Defined under NAFTA 11

by Daniel Gervais on Tuesday, December 11th at 8:50 PM

Eli Lilly has reportedly notified that it might file under NAFTA Chapter 11 (investment protection) because Canadian courts have applied the utility requirement in a way that led to the invalidation of some of its patents. The utility industrial applicability requirement is a recognized patentability criteria in TRIPS 27.1 but it is not defined.

This would be a novel use of investment law to impose a definition of utility (or industrial applicability as it is known elsewhere) based on (I assume) the US Federal Circuit’s definition because there is no formally accepted international benchmark . In the United States, the utility requirement has basically disappeared from view as a substantive requirement.

A recently published comparative analysis by Jay Erstling, Amy M. Salmela, and Justin N. Woo (Usefulness Varies By Country: The Utility Requirement of Patent Law in the United States, Europe and Canada) is very helpful to understand the context. Published in 3:1 Cybaris  Intell. Prop. L. Rev. 1 (2012).

In the meantime, WIPO made it official.  Chinese applicants filed more patent applications worldwide in 2011 than those of any other country. China had 24.6% of the world total to the US’s 23.5%.  Q: when will China be the one designating the US as a priority foreign country under its version of section 301?


Tuesday, December 11th at 8:50 PM