Supreme Court Voids Viagra Patent as Insufficient Disclosure Means It Fails the "Patent Bargain"

The Supreme Court of Canada this morning shocked the pharmaceutical industry by voiding Pfizer's patent in Canada for Viagra. The unanimous decision provides a strong reaffirmation of the policy behind patent law, namely that patents represent a quid pro quo bargain of public disclosure of inventions in return for a time limited monopoly in the invention. The Supreme Court describes it in this way:

The patent system is based on a "bargain", or quid pro quo: the inventor is granted exclusive rights in a new and useful invention for a limited period in exchange for disclosure of the invention so that society can benefit from this knowledge. This is the basic policy rationale underlying the Act. The patent bargain encourages innovation and advances science and technology.

Disclosure is therefore a crucial part of the patent bargain.

The court clarifies that this involves not only a description of the invention and how it works, but rather a much more practical level of disclosure "to enable a person skilled in the art or the field of the invention to produce it using only the instructions contained in the disclosure." In this case, the court finds that Pfizer failed to provide sufficient disclosure, concluding:

the public's right to proper disclosure was denied in this case, since the claims ended with two individually claimed compounds, thereby obscuring the true invention. The disclosure failed to state in clear terms what the invention was. Pfizer gained a benefit from the Act - exclusive monopoly rights - while withholding disclosure in spite of its disclosure obligations under the Act. As a matter of policy and sound statutory interpretation, patentees cannot be allowed to "game" the system in this way.

Pfizer argued strenuously that this should not result in invalidating the patent, but Justice Lebel, writing for the court, found no other alternative. The Viagra patent is therefore voided in Canada (which will allow for generic substitutes) and the importance of the basic foundation of patent policy for the broader benefit of society reaffirmed.