Hyperlawhypertext legal database Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning v. Commissioner of P [1966] SCR 604

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Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning v. Commissioner of P

[1966] SCR 604 Court SCC Decision date 1966-04-26 English

Decision Thurlow J. · Judgment of the Court

Contents

Thurlow J.

ments, to have proceeded apace at working its invention in Canada. Instead, the appellant took the exact opposite course and by increasing the price at which its solely owned subsidiary, Rodi Ltd., sold in Canada, and at the same time holding fast its own sale price in Canada, it contrived to turn all purchases to its own foreign-manufactured articles. It continued that course until March of 1961, following the presentation of this respondent's application for compulsory In my view, that evidence is a clear demonstration of the appellant's intent not to work the invention in Canada on a commercial scale, an intention which was only abandoned when it became apparent that such a course would result inevitably in the compulsory licence being granted.
For these reasons, I concur in the dismissal of the appeal.

Judgment of the Court

MARTLAND J.:-This is an appeal from the judgment of Thurlow J. in the Exchequer Court', which dismissed an appeal by the appellant from the refusal by the respondent Co'M'Isto reissue Canadian Patent No. 582,623 which had been granted to the appellant on September 1, 1959.
On July 15, 1960, the appellant and Hoechst Pharmaceuticals of Canada Limited brought an action against Gilbert & Company, Gilbert Surgical Supply Co. Limited and Jules R. Gilbert Limited claiming infringement of this and several other patents. The last named company is an intervenant in the present appeal. The action was dismissed in the Exchequer Court by Thurlow J., and an appeal to this Court from that judgment was dismissed on December 14,1965.
The reasons for judgment in this Court, delivered by my brother Hall describe the nature of the invention in respect of which Patent No. 582,623 and the other patents involved in the case were granted, and the legal issue involved, as follows:
All the patents relate to defined new sulfonyl ureas, each patent claiming a different process of producing them. Each of the processes produces the new substances by known methods from known materials, with the result that the patentability of the process depends on the possession of unexpected utility by the new substances produced. The unexpected utility stated in the patents is the capacity of lowering blood sugar levels, this being referred to as hypoglycemic activity. The process in each patent is claimed in claim 1 in relation to the production of all the new sulfonyl ureas. Each patent contains a claim (claim in all but the last patent and claim in the last patent) to a specific new sulfonyl urea, tolbutamide, whenever obtained by the process claimed in claim 1 of the patent. It is upon this claim to tolbutamide in each patent that the appellant founded its action for infringement.
It is conceded that tolbutamide, standing by itself, could have been the subject matter of a valid patent if claimed as such when prepared or produced by the methods or processes of manufacture particularly described and claimed in the patent or by their obvious chemical equivalent. It possessed the previously undiscovered useful quality as defined in Re May & Baker Ltd. and Ciba Limited, 65 R.P.C. 255 and adopted by this Court in Commissioner of Patents v. Ciba, (1959) S.C.R. 378. However, the 1 [19661 Ex. C.R. 91, Fox Pat.
respondents say that the process claims in each of the patents in question FM_ Rare invalid as being too broad in their terms, and, in consequence, the claim to the substance tolbutamide cannot stand for that reason.
His conclusion is stated as follows:
In challenging the validity of the patents in question, counsel for the respondents put his case upon the footing that no one could obtain a valid Lucius & patent for an unproved and untested hypothesis in an uncharted field. This is what the appellant has tried to do in claim 1 of each of the patents. It has sought to cover, in the words of Thurlow J., "every mathematically conceivable sulphonyl urea of the class" and has consequently overclaimed, and, in so doing, invalidated claim 1 in each patent.
Martland J He then went on to hold, applying the decisions of this Court in C. H. Boehringer Sohn v. Bell-Craig Limited' and Commissioner of Patents v. Winthrop Chemical Company Incorporated , that the claims to the product tolbutamide (claim 10 in the patent now in question) fell because they could not stand except upon the foundation of a valid process claim, which did not exist.
Prior to the delivery of the judgment of Thurlow J. in its infringement action, the appellant, in August 1963, had petitioned for the issue of a new patent, and had surrendered Patent No. 582,623. The petition was based upon s. 50 of the Patent Act, R.S.C. 1952, c. 203, which provides as follows:
50. (1) Whenever any patent is deemed defective or inoperative by reason of insufficient description or specification, or by reason of the patentee claiming more or less than he had a right to claim as new, but at the same time it appears that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, the Commissioner may, upon the surrender of such patent within four years from its date and the payment of the further fee hereinafter provided, cause a new patent, in accordance with an amended description and specification made by such patentee, to be issued to him for the same invention for the then unexpired term for which the original patent was granted.
(2) Such surrender takes effect only upon the issue of the new patent, and such new patent and the amended description and specification have the same effect in law, on the trial of any action thereafter commenced for any cause subsequently accruing, as if such amended description and specification had been originally filed in their corrected form before the issue of the original patent, but in so far as the claims of the original and reissued patents are identical such surrender does not affect any action pending at the time of reissue nor abate any cause of action then existing, and the reissued patent to the extent that its claims are identical with the original patent constitutes a continuation thereof and has effect continuously from the date of the original patent.
1 [19631 S.C.R. 410, 25 Fox Pat. C. 36, 41 C.P.R. 1, 41 D.L.R. (2d) 611. [19481 S.C.R. 46, 7 Fox Pat. C. 183, 7 C.P.R. 58, 2 D.L.R. 561. (3) The Commissioner may entertain separate applications and cause patents to be issued for distinct and separate parts of the invention patented, upon payment of the fee for a reissue for each of such reissued patents.
The relevant portions of the petition are as follows:
scHAF'T 1. THAT Your Petitioner is the patentee of Patent No. 582,623 granted on September 1st 1959, for an invention entitled MANUFACTURE OF NEW SULPHONYL-UREAS.
B 2. THAT the said Patent is deemed defective or inoperative by reason of the patentee having claimed more or less than he had a right to claim new.

3. THAT the respects in which the patent is deemed defective or Martland J. inoperative are as follows:

Claims 1, 3 and 4 of the patent cover the production of new compounds of a general formula in which certain substituents are not exhaustively defined.
The patent contained claims directed to the production of the new compounds when prepared by the process of claim 1 and to certain specific products when prepared by the process of claim 1 but did not contain claims to specific products when prepared by specific processes.

4. THAT the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention in the following manner: Applicant on the advice of his attorneys believed at the time the application was pending that for compliance with Section 41(1) all that was required was that a product claim be dependent on a process claim by means of which the specific claimed substance could be prepared, whereas on March 21, 1962, it was pronounced in a judgment of the Exchequer Court of Canada that for compliance with Section 41(1) a claim covering a specific product should be dependent on a process claim which defines specifically the production of that substance.

THAT at the time the application was pending, applicant also believed that for the production of a medical substance, broad terms of theoretically unlimited scope would not result in any defect in the claims, whereas following a judgment in the Exchequer Court of Canada on March 1962, it became apparent that the validity of such claims was in doubt.

5. THAT knowledge of the new facts in the light of which the new claims have been framed was obtained by Your Petitioner on or about April 1962 when the fact and effect of the said judgments of the Exchequer Cour was communicated to Your Petitioner by its Canadian patent agents, whereupon the specification of the Patent was reviewed carefully for the presence of these and other defects.

In the petition, the appellant sought to add five new claims to the patent, as previously issued. Three of these purported to restrict the substituent group of the general formula. The other two contained a specific claim for the substance tolbutamide and for a specific process for its preparation. The appellant did not seek to make any change in the original disclosure, nor to abandon any of the claims contained in the patent as originally issued. In fact, OOUR SUPRtME DU CANADA as has already been noted, the appellant persisted in its infringement action, notwithstanding the filing of the petition.
The petition was refused by the respondent. The material portions of his decision are as follows:
Careful consideration has been given to the admissibility of this reissue application for prosecution in the
Whether an application for reissue is acceptable for prosecution before TsE the Office depends on the reasons given in the petition for wanting to correct what is said to be the defect or inoperativeness of the patent. Martland J.
Section 50 of the Patent Act is the governing section. The reasons for reissue are insufficiency of description or specification or claiming more or less than what the patentee had the right to claim. I do not believe that the patentee in this case can rightly invoke any of these reasons. In addition to the reasons the section is conditional on certain circumstances which occurred or were present at the time of issue. The error must have arisen from inadvertence, accident or mistake at that time. Here there was no inadvertence, accident or mistake at the time of issuing the patent. The applicant was satisfied to obtain his patent with claims submitted and was satisfied on the advice of his agent that the provisions of section 41 subsection 1 has been complied with. There was no defect that the applicant had in mind and failed through inadvertence to correct, (1936 S.C.R. 649 at page 661 Northern Electric Company Limited v. Photo Sound Corporation). It is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification. It must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original, (In re Sawyer 0.G. USPQ Decisions of the Commissioner 1949 at page 343).
I do not believe that a change in the legislation or a different interpretation of the legislation was ever contemplated to be a reason for reissue. In this case the courts interpreted the sufficiency of the claims in a patent in a manner different from the generally accepted views of the patent agents and patentees, thereby creating a situation which did not exist at the time of issue of the original patent.
My ruling that the present application for reissue cannot be entertained.
From this refusal, the appellant appealed to the Exchequer Court'. The respondent contested the right of the appellant to appeal the respondent's decision under s. 50, contending that the Court was without jurisdiction to hear it. Thurlow J., in view of his decision on the merits of the appeal, found it unnecessary finally to determine this point, though stating that he was inclined to the view that a right of appeal did exist.
1 [19661 Ex. C.R. Fox Pat. C.
The relevant section of the Patent Act is s. 44, which provides as follows:

44. Every person who has failed to obtain a patent by reason of a refusal or objection of the Commissioner to grant it may, at any time within six months after notice as provided for in sections 42 and 43 has been mailed, appeal from the decision of the Commissioner to the MEISTER Exchequer Court and that Court has exclusive jurisdiction to hear and determine such appeal.

Section 43 is not relevant in relation to this issue. Section 42 reads as follows:
OF 42. Whenever the Commissioner is satisfied that the applicant is not by Martland J. law entitled to be granted a patent he shall refuse the application and, by registered letter addressed to the applicant or his registered agent, notify such applicant of such refusal and of the ground or reason therefor. It was the contention of the respondent that, when these sections are read together, it cannot be contemplated that s. 44 provided for a right of appeal in respect of the refusal by the Commissioner of Patents to issue a new patent under s. 50. It was submitted that an application under s. 50 was not the kind of application contemplated by s. 42. Reliance was placed on the definition of an "applicant" in s. 2(a) of the Act, i.e.:
2. (a) "applicant" includes an inventor and the legal representatives of an applicant or inventor;
as indicating that a patentee, surrendering his patent and seeking the granting of a new patent, was not an applicant within the meaning of s. 42.
It should be observed, however, that the definition of "applicant" in s. 2(a) is not an exclusive one, and that the word "application", as defined in s. 2(c) of the Patent Rules, means, "except in sections 96 to 116, an application for a patent or an application for a reissue of a patent". Section 12(2) of the Act provides that any rule or regulation made by the Governor in Council is of the same force and effect as if it had been enacted in the Act.
In the light of these circumstances, in my opinion the wording of s. 44 of the Act permits an appeal in cases coming within s. 50.
This being so, it is necessary to consider the refusal by the respondent of the appellant's petition upon the merits. I interpret the reasons for that refusal as being twofold: 1. That the appellant could not rightly invoke any of the reasons justifying the reissue of a patent under s. 50, i.e., insufficiency of description or specification or the claiming of more or less than the appellant had the right to claim.

2. In any 'event there had been no inadvertence, accident or mistake causing the alleged error.

ac
On the appeal from the decision of the respondent, pleadings were ordered and the parties agreed upon a statement of facts. Paragraph 4 of the statement reads as follows:
Having reached the conclusion that an appeal did lie to the Exchequer Court, I propose to consider the issue raised in subpara. (b) of para. 4 above.
It is clear from the fact that in the petition for reissue no change was made in the disclosure, and no claims previously made were abandoned, that the appellant did not allege error, within s. 50, by reason of insufficiency of description or specification or by reason of its having claimed more than it had a right to claim. It is also clear from the petition that the appellant did not allege that the error arose from inadvertence or accident.
What the appellant claims, therefore, is that its patent was defective or inoperative by reason of its not having claimed that which it had a right to claim and that such error arose from mistake.
The mistake which is relied upon is that the appellant, on the advice of its attorneys, believed that to comply with s. 41(1) of the Patent Act all that was necessary was that a product claim be dependent on a claim for a process by means of which the substance could be prepared and it was not realized that a claim for a specific product should be dependent upon a process claim specifically defining the production of that substance. This, it is claimed, was not discovered until the reasons for judgment of the Exchequer
Court in Boehringer v. Bell-Craig' were issued.
It is also claimed that, prior to that time, the appellant believed that, for the production of a medical substance, broad terms of theoretically unlimited scope would not
VoanLs result in any defect in the claims.
In essence what the appellant is saying is that the appellant's attorneys made a mistake of law in respect of Commsthe product tolbutamide in having failed to make a process claim specifically defining the production of that substance. The question to be determined is, therefore, whether that alleged mistake is a mistake within the meaning of s. 50.
Counsel for the appellant pointed out that the reissue provision of the Patent Act is drawn from legislation in the
United States. The American provision is similar to that in
Canada, subjedt, however, to some material differences. The word "deemed" does not appear in the American statute.
Instead of the words "defective or inoperative" it uses the words "inoperative or invalid". It does not refer to a patentee claiming less than he had a right to claim. Furthermore, where the required conditions exist, it provides that the Commissioner "shall" cause a patent to be reissued, whereas our Act uses the word "may".
In the result, the American statute requires the Commissioner to reissue a patent, in the events defined, even in cases where the initial patent is invalid. The Canadian Act creates a discretion, and only in cases where the initial patent is "deemed defective or inoperative".
The first Canadian Patent Act, that of the Province of
Canada, 12 Vict., c. 24, did use the words "inoperative or invalid". The forerunner of the present s. 50, which uses the words "defective or inoperative", is found in s. 19 of the
Statutes of Canada, 1869.
The view of the Supreme Court of the United States regarding the purpose of the American provision as to reissue was stated as being "to provide that kind of relief which courts of equity have always given in cases of clear accident and mistake in the drawing up of written instruments". Mahn v. Harwood . This statement was cited, with approval, in Sontag Chain Stores Co. v. National Nut Company of California.
Used in this sense, the word "mistake" means that a acr th inein written instrument does not accord with the true intention of the party who prepared it. A person relying upon a mistake under 50 would have to establish that the patent which was issued did not accurately express the inventor's Com intention with respect to the description or specification of the invention or with respect to the scope of the claims which he made. This view appears to me to coincide with that expressed by Chief Justice Duff, in relation to the word "inadvertence" in Northern Electric Company Ltd. v. Photo Sound Corporation', cited by the respondent in his reasons for the refusal of the appellant's petition.
In General Radio Co. v. Allen B. DuMont Laboratories, Inc.', the Circuit Court of Appeals, Third Circuit, held that the failure of the patent applicants to foresee that the application was based upon an error of judgment by the patentee's solicitors in the drafting of the claims.
The appellant relied upon the reasoning of the Court of Appeals, Ninth Circuit, in the case of Moist Cold Refrigerator Co. v. Lou Johnson Co. . In that case the Court held that the failure of the patent applicants to foresee that the original patent would be declared invalid as functional was an error through "inadvertence or mistake" where the applicant drafted claims in good faith, without intent to cover any means of producing the result, and where the functional nature of the claims was a very close question. The Court pointed out that in s. 251 of the Patent Act of 1952, governing the reissue of patents, the words "inadvertence, accident or mistake" had been deleted, but held that the test as to the type of error required remained the same as before.
Two points should be noted in respect of this decision. The first is that in this case a reissue had been granted in respect of a patent which had been held to be invalid. As has been pointed out earlier, the American statute in terms permits the reissue of an invalid patent in certain specified circumstances. The Canadian Act, however, does not so provide. Section 50 deals only with a patent which is defective or inoperative. In my opinion it contemplates the existence of a valid patent which requires reissue in order to become fully effective and operative. In the present case, in so far as the substance tolbutamide is concerned, the patent for which reissue is sought has been held by this
Court to be invalid.
The second point is that, while the Court considered an error on a question of law could be one which could be corrected by reissue if it arose through inadvertence or Mariad mistake, the test applied does not actually depart signifi-.
cantly from that defined by the Supreme Court of the
United States in the cases previously cited. The Court did find on the evidence that the patentee's intent was to take proper steps only to protect its invention and not to cover any and all means of producing the result. Its failure to accomplish that intent resulted from a mistake in framing its claims so as not to render them functional in character within the legal requirements and the earlier decision that they had not done so was a close question.
The learned trial judge, in the present case, left open the question as to whether inadvertence, accident or mistake in relation to a question of law could come within s. 50. He was inclined to the view that such cases might arise.
It is not necessary to express a final view with respect to that question in the present case. Assuming, without deciding, that a mistake of law could constitute that kind of mistake which is contemplated by s. 50, in my opinion the section can only operate if the patentee can satisfy the
Commissioner that, because of his mistake, the patent fails to represent that which the inventor truly intended to have been covered and secured by it. I do not think that the appellant has met that test.
The parties to this appeal agreed to the following stated facts:
OOUR SUPRtME DU CANADA
.AKTIEN- BRUNING o'PATENTS
Martland J.
(c) The disclosure in Patent No. 582,623 does not purport to be one of an invention of tolbutamide alone, or of any of the other specific substances defined in claims 10 to and a process or processes for their preparation, but on the contrary, relates to a class of sulphonyl ureas of which tolbutamide and the other specific substances defined in claims to are members; and the disclosure proceeds to outline in general terms the methods by which ureas of the class may be produced, and asserts utility for the substances of the class. Tolbutamide and the other specific substances defined in certain of the claims are mentioned from time to time in the disclosure as examples, but not until one reaches claims 10 to 19 is there any indication that the invention is concerned with anything but a whole class of substances and general methods of producing them.
(d) The method used in process claims 1 and 2 was not new, nor were the starting materials which were used new.
(e) The great bulk of conceivable substances embraced within the class defined in claims 1 and 2 have not, in fact, been produced or tested and nothing is, in fact, known of what their pharmacological effects or usefulness may be; pharmacological effects of new and untried substances are not generally predictable or, if predictable at all, are not predictable to any great extent.
(f) It is highly improbable that all, or substantially all, of the infinitely large class of substances produced by processes within the scope of claims 1 and 2 have either the blood sugar lowering activity to a useful extent or the freedom from toxicity or harmful side effects necessary to render them useful; and it cannot be predicted that all or substantially all of the substances produced by the process claimed in claim 1 have advantages for lowering and controlling the blood sugar level of patients suffering from diseases such as diabetes, over the known methods of (1) dieting, and (2) the administration of insulin.
There is the further fact that the petition for reissue made no change in the disclosure and abandoned none of the claims contained in the patent originally issued.
. Insthe light of these facts, it would appear to me that the conclusion of the learned trial judge with respect to claims 1, 3 and 4, referred to in the appellant's petition for reissue, is fully warranted.
I should say a word, however, with respect to what was put forward as an explanation of the alleged error in claims 1, 3 and 4. The Commissioner plainly did not accept it. The explanation was that the alleged error arose through inadvertence, accident or mistake in that at the time the application was pending the applicant believed that for the production of a medical substance broad terms of theoretically unlimited scope would not result in any defect in the claims whereas after a judgment of this Court it became apparent that the validity of such claims was in doubt. Assuming this to be true (which is a matter of some difficulty in view of the fact that the May & Baker case had already been decided and had been considered and in some respects adopted in this country in Commissioner of Patents v. Ciba, (1959) S.C.R. 378) 1 do not see how the Commissioner could have been expected to accept it as showing that the alleged failure to define certain substituents exhaustively arose from inadvertence, accident or mistake for it shows on its face that the applicants knew their alleged invention was limited to substituents that required to be more exhaustively defined but refrained from so defining them not by inadvertence, accident MEISTER or mistake but deliberately so as to claim and thus get a monopoly under the statute on something which on the admitted facts they had not invented and must have known they had not invented and which was not in fact an invention at all. This is not a case of the applicants having claimed more than they were entitled to claim as new through inadvertence, accident or mistake but one of their having deliberately set out to Martland J. monopolize what was for the most part an unexplored field of organic chemistry so as to prevent others during the life of the patent from exercising their right to search in that field for, and if successful to put on the market, new substances which might turn out to be as useful or more useful than the several specific substances in that field which the applicants had found to be useful.
The claim to the substance, tolbutamide, claim 10, is one which falls within the requirements of s. 41(1) of the Patent Act, which provides:
41.(1) In the case of inventions relating to substances prepared or produced by chemical processes and intended for food or medicine, the specification shall not include claims for the substance itself, except when prepared or produced by the methods or processes of manufacture particularly described and claimed or by their obvious chemical equivalents.
The process claim relied upon for compliance with this subsection was claim 1. There is no suggestion in the petition that the appellant had intended to include in its original patent a claim of the kind defined in the new claim 23 specifically defining the production of tolbutamide. It is clear that judgment was exercised and a decision reached to rely upon the process claim which is claim 1, which, as already noted, was a claim described by Thurlow J. in the infringement action and adopted by this Court as seeking to cover "every mathematically conceivable sulphonyl urea of the class".
There was, therefore, no mistake in the sense that the original patent failed to represent the true intent of the appellant. The mistake which is alleged is a failure, in the light of existing understanding of the law, to appreciate that a process claim of this kind would not be sufficient to support the claim to the product tolbutamide under the requirements of s. 41(1).
119661 COUR SUPRtME
I do not think that a mistake of that kind falls within s. 50. Even if the Moist Cold Refrigerator Co. case were to be accepted as an accurate statement of the law in Canada in so far as a mistake of law is concerned, which I do not necessarily accept, the present case would not fall within it uisa since here the appellant deliberately elected to make a process claim in the widest possible terms and had no Comms- intention of restricting its invention solely to the production of tolbutamide.
Martland
Nor do I agree that the decision of Thurlow J. in C. H. Boehringer Sohn v. Bell-Craig Limited, supra, could be regarded as being an unexpected change of view as to the state of the law. This Court in Commissioner of Patents v. Winthrop Chemical Co. Inc., supra, had held that a claim for a substance alone could not be entertained if it was of the kind defined in s. 41(1) and that the applicant must describe in his specification the method or process by which the substance is prepared or produced and claim such process.
The English decision of May v. Baker', which had been approved by Thorson P., [1956-1960] Ex. C.R. 142, and by this Court, [1959] S.C.R. 378, in relation to one aspect in Commissioner of Patents v. Ciba, had dealt with a broad process claim of the kind made in claim 1 and had held, to quote from the headnote:
At the very least, this decision constituted a warning that there might be doubt as to the validity of claim 1 upon which, under s. 41(1), the appellant elected to rely in claiming the substance tolbutamide.
In the Boehringer case this Court held that an invalid process claim could not support a claim to a substance under s. 41(1), and this was repeated in the decision in the infringement action in relation to claim 10 of the patent under consideration here. Such a conclusion merely stated what I think was implicit in the Winthrop case.

Cases cited

Statutes and regulations cited