Société des Usines Chimiques Rhone-Poulenc et al. v. Jules R. Gilbert Ltd. et al.

For these reasons I would dismiss the appeals of all the appellants and affirm the convictions entered by the learned Magistrate.

et V. Appeals dismissed. Ritchie J.

JUDSON J.:-This is an action brought by Soci6t6 des UsINES CHIMIQUES Usines Chimiques Rhone-Poulenc and Ciba, S.A., for in- RHONEfringement of Patent No. 474,637 for improvements relat- Poet at ing to substituted diamines. The patent was granted under s. 41(1) of the Patent Act, which reads:

41. (1) In the case of inventions relating to substances prepared or et al. 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 patent disclosed and claimed not one but three processes. The plaintiffs restricted their action to only one of these-claim 18. In these circumstances the learned trial judge' dismissed the action. The basis for his decision was that while s. 41(2) of the Patent Act might apply to raise the presumption that the alleged infringing substance was produced by some one or another of these three processes, the subsection cannot be read as raising the presumption that the substance was made by any particular one of them. Since there was no presumption to be applied, he consequently found that there was no basis for finding that the substance was made by the process of claim 18.

In so holding, in my respectful opinion, the learned trial judge was in error. Section 41(2) reads:

41. (2) In an action for infringement of a patent where the invention relates to the production of a new substance, any substance of the same chemical composition and constitution shall, in the absence of proof to the contrary, be deemed to have been produced by the patented process. The plaintiffs proved a case by putting in patent No. 474,637 and an agreed statement of facts as follows:

For the purposes of this action the parties have agreed:

I. That the process claimed in claim 18 of Canadian patent No. 474,637 consists in the application of methods which were known on June 22nd, 1943, to substances which were also known on the said date, though the said methods had never at the said date been applied to the said substances except by the inventor named in the said patent.

1 [19661 Ex. C.R.

S.C.R.

119673 They also proved the chemical composition of the substance and its sale by the defendants. They then relied upon the presumption set out in s. 41(2).

The defence raised a number of issues on infringement and attacked the validity of the claim in suit. The learned trial judge deliberately refrained from expressing any opinal.

iOn on these matters. For the purpose of his reasons he assumed the validity of the patent and said that the plaintiff could not rely upon the presumption. He therefore decided the case on very narrow grounds. The judgment means that where a patent makes a claim to different methods of producing a substance, the presumption of infringement provided by s. 41(2) is inapplicable unless it can be shown that it is produced according to all the various processes set out in the claims. This obviously places an impossible burden on a plaintiff and defeats the object of the subsection.

This s. 41(1) patent is for a substance produced by three methods or processes. This is permitted by s. 41(1). Section 41(1) does not make it necessary to have three separate applications for the same substance, one by each process. The action is brought for infringement and one of these processes is pleaded. There is no reason why when the plaintiff frames its action in this way that the presumption in s. 41(2) should not apply. We are all of the opinion that the learned trial judge was in error in holding that s. 41(2) is inapplicable where there is more than one process claimed and thus patented.

The appeal is allowed with costs and the judgment of the Exchequer Court dismissing the action with costs is set aside. The case is remitted to the Exchequer Court to be dealt with on the matters remaining to be considered. Appeal allowed with costs.