Judgment of the Court
The JUSTICE.-The defendant appeals from the judgment of the Exchequer Court (Maclean, P.) (1) holding it liable to the plaintiffs for infringement of Canadian patent no. 244,847, granted on the 25th November, 1924, as a re-issue of Canadian patent no. 196,390, granted on the 20th January, 1920.
The fact of infringement, if the patent in question be valid, is no longer in controversy. The only issue on the present appeal is as to the validity of the patent, which is challenged on these grounds:- (a) Material untruth in the affidavit prescribed by s. 10 of the Patent Act (R.S.C., c. 69) in verification of the petition for the original patent no. 196,390, in that a prior patent had, to the knowledge of the affiant, been granted in Germany for the same invention;
(b) (1) Invalidity of the original patent because of sudh untruth of a material allegation (s. 29) rendering the re-issued patent likewise invalid;
(b) (2) Absence of any affidavit in support of the petition for the re-issued patent.
The defendant also complains that the declaration and injunction granted by the Exchequer Court are wider than the issues presented to it justified.
By s. 29 of the Patent Act a patent is void.
,affidavit verifying the petition on which that patent was Anghn granted, which is impugned, is
' that the same [i.e. the invention for which the patent was sought] has not been patented to me or others with my knowledge or consent in any country.
That the issue of the German patent was actually known to the affiant is not, perhaps, as conclusively established as it might have been. We are not disposed to infer fraudulent intent negatived by the trial judge. The materiality of the statement, however, having regard to s. 8 of ihie Patent Act, would admit of little doubt, were it not for the enactment of ss. 6 and 7 (1) of the amending statute, 11 & 12 Geo. V, c. 44, which came into force on the 4th of June, 1921.
Those sections read as follows:- (6) The rights provided by section eight of the Patent Act for the filing of applications for patents for invention which rights had not expired on the first day of August, 1914, or which rights have arisen since that date shall be, and the same are hereby extended, until the expiration of a period of six months from the coming into force of this Act, and such extension shall apply to applications upon which patents have been granted as well as to applications now pending or filed within said period. Provided that such extension shall in no way affect the right of any person, who, before the passage of this Act, was bona fide in possession of any rights in patents or applications for patent conflicting with rights in patents granted or validated by reason of such extension, to exercise such rights himself personally or by such agents, or licensees, as derived their rights from him, before the passage of this Act, and such persons shall not be amenable to any action for infringement of any patent granted or validated by reason of such extension.
(7) (1) A patent shall not be refused on an application filed between the first day of August, 1914, and the expiration of a period of six months from the coming into force of this Act, nor shall a patent granted on such application be held invalid by reason of the invention having been patented in any other country or in any other of His Majesty's Dominions or Possessions or described in any printed publication or because it was in public use or on sale prior to the filing of the application, unless such patent or publication or such public use or sale wma issued or made prior to the first day of August, 1913.
It will be noticed that these provisions apply to applications on which patents had already been granted, as well as to applications still pending when the statute came into force-under s. 6 where the rights provided by s. 8 had not expired on, or had arisen after, the 1st of August, 1914, and under s. 7 (1) where the application for the patent in question was made after the 1st of August, 1914.
The rights of the plaintiffs' assignor (Langmuir) under s. 8, arose after the 1st of August, 1914, and his application for patent no. 196,390, was also made after that date. The present case, therefore, falls within the provisions of those sections and, having regard to them, the untruth of his statement, assuming that the existence of the German patent rendered it untrue, can scarcely now be regarded as material, since under s. 7 (1) of the 'amending Act the existence of the German patent of 1917 cannot be made a ground for avoiding Canadian patent no. 196,390, applied for in 1919, and issued in January, 1920. At all events, in the absence of proof of fraudulent intent on the part of Langmuir, we are not prepared to hold that his patent no. 196,390 was void.
We accordingly consider that the attack -on the validity of the original patent must fail, if it would have been otherwise open to impeachment under s. 29 by an alleged infringer.
The foundation of the attack upon the re-issued patent on ground (b) (1) thus also disappears.
Nor can the appellant fare better in regard to ground (b) (2). Patent no. 244,847 was a re-issue under s. 24 of the Patent Act (now s. 27 of 13-14 Geo. V, c. 23). While no affidavit is prescribed by that section to obtain such a re-issue, it is contended for the appellant that s. 10 applies to a re-issue under s. 24 as well as to the issue of an original patent under s. 7.
The respondent, on the other hand, maintains that the Commissioner is authorized to satisfy himself by such means as he deems proper and sufficient, as to the existence of the conditions entitling the applicant to a new patent. However that may be, we are satisfied that any insufficiency in the material on which the Commissioner acts, the entire absence of an affidavit or any defect in the form and substance of that which is put forward as an affidavit in support of the claim, cannot, in the absence of fraud, which in this instance has not been suggested, avail an alleged infringer as a ground of attack on a new patent issued under s. 24. It is not a. " fact or S.C.R.
default, whidh, by this Act, or by law, renders the patent void " (Patent Act, s. 34). The recital of the patent that the applicant as assignee of the Langmuir patent no. 196,390, " has complied with the requirements of the Patent Act " is conclusive against the appellant in the absence of fraud. Whittemore v. Cutter (1); Seymour v. Osborne (2); Wayne Manufacturing Co. v. Coffield Motor Washer Co. (3); Hunter v. Carrick (4).
The appeal, therefore, so far as it depends on the invalidity of patent no. 244,847, fails.
But, having regard to the fact that the allegations of infringement were ultimately confined to claims nos. 3, 6 and 10 of patent no. 244,847, it may be better that the judgment of the Exchequer Court be modified so as to make clearer what we think was by it intended. To that end we would expressly restrict the finding of infringement with which paragraph no. 1 of that judgment concludes, so that it would read as follows:and the injunction should also be modified accordingly. Subject to this slight variation, the appeal will be dismissed with costs.
Appeal dismissed with costs. Injunction modified.