Hyperlawhypertext legal database Hoechst v. Halocarbon (Ontario) Ltd. et al. [1979] 2 SCR 929

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Hoechst v. Halocarbon (Ontario) Ltd. et al.

[1979] 2 SCR 929 Court SCC Decision date 1979-06-21 English

PartiesFarbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning Appellant·Halocarbon (Ontario) Limited and Halocarbon Products Corporation Respondents

Counsel (4)
H. Lorne Morphy, Q.C., David M. Rogers, Q.C., and Marilyn L. Pilkington, for the appellant.
Donald F. Sim, Q.C., and Roger T. Hughes, for the respondents.
Solicitors for the appellant: Rogers, Beveskin & Parr, Toronto.
Solicitor for the respondents: Donald F. Sim, Toronto.

Judges Martland, Ronald; Spence, Wishart Flett; Pigeon, Louis-Philippe; Dickson, Robert George Brian; Beetz, Jean; Estey, Willard Zebedee; Pratte, Yves

Delivered by Majority

On appeal from Federal Court of Appeal

Subjects Intellectual property

Contents

The judgment of Martland, Dickson and Estey JJ. was delivered by

The substance, isohalothane, is not new. The appellants do not claim invention of the substance but rather a process for its production.
This process for manufacturing isohalothane, which comprised reacting a monomer under radical forming conditions with hydrogen bromide and isolating the isohalothane obtained, was not new because, in 1954, R.N. Haszeldine and B.R. Steele had disclosed that the same monomer could be reacted with the same bromide to produce the same product.

[Page 933]

The only possible invention in Claim 10 was the production of isohalothane in the “liquid phase”. Both Courts below agreed that whether or not this involved inventive ingenuity was the real issue in the case.
The paper of Haszeldine and Steele did not specify that the reaction must be in a particular phase, gaseous or liquid. Considerable attention was paid at the trial to whether the Haszeldine process had been carried out in the liquid or the gaseous phase. The experts disagreed. The trial judge concluded that it had probably been carried out in the gaseous phase.
There were no problems encountered or to be solved in running the reaction in the liquid phase.

Footnotes

  1. [1] [1976] 2 F.C. 468.
  2. [2] [1974] 2 F.C. 266.
  3. [3] (1928), 45 R.P.C. 153.
  4. [4] (1974), 14 C.P.R. (2d) 59.
  5. [5] (1943), 60 R.P.C. 135.
  6. [6] [1968] R.C.S. 307.
  7. [7] [1976] R.P.C. 231.
  8. [8] [1929] A.C. 269.
  9. [9] [1956] R.P.C. 125.
  10. [10] [1930] A.C. 97.
  11. [11] [1972] R.P.C. 346.