Monsanto Co. v. Commissioner of Patents, (1979) 28 N.R. 181 (SCC)
| Judge | Laskin, C.J.C., Martland, Ritchie, Pigeon, Dickson, Beetz, Estey, Pratte and McIntyre, JJ. |
| Court | Supreme Court (Canada) |
| Case Date | June 28, 1979 |
| Jurisdiction | Canada (Federal) |
| Citations | (1979), 28 N.R. 181 (SCC);28 NR 181;1979 CanLII 244 (SCC);42 CPR (2d) 161;100 DLR (3d) 385;[1979] 2 SCR 1108 |
Monsanto Co. v. Commr. of Patents (1979), 28 N.R. 181 (SCC)
MLB headnote and full text
Monsanto Company v. Commissioner of Patents
Indexed As: Monsanto Co. v. Commissioner of Patents
Supreme Court of Canada
Laskin, C.J.C., Martland, Ritchie, Pigeon, Dickson, Beetz, Estey, Pratte and McIntyre, JJ.
June 28, 1979.
Summary:
This case arose out of a company's application for a patent for a method of inhibiting premature vulcanization of rubber. The company invented a chemical compound which inhibited premature vulcanization. The company claimed a patent, not only for the compound, but for many other closely related compounds, which it could be soundly predicted would perform the same function. However, only three of the compounds were tested. A patent was refused by the Commissioner of Patents. The company appealed. In a judgment unreported in this series of reports the Federal Court of Appeal dismissed the appeal. The company appealed.
The Supreme Court of Canada allowed the appeal and held that a patent should issue for an invention embracing all of the compounds, where it could be soundly predicted that they would perform in the same manner as the tested ones. See paragraphs 1 to 26.
Martland, J., dissenting in the Supreme Court of Canada, with Dickson, J., concurring, would have dismissed the appeal on the ground that the Commissioner made no error in law and reached factual conclusions which he was entitled to make. See paragraphs 27 to 51.
Administrative Law - Topic 543
Hearing and decision - Form and content of decision of tribunal - Reasons - The Supreme Court of Canada held that the Commissioner of Patents was required to give reasons for a refusal to grant a patent - See paragraphs 17 to 23.
Patents of Invention - Topic 1128
Specification and claim - Claim - Disclosure - Sufficiency of - The Supreme Court of Canada held that the disclosure of an invention in an application for a patent need only give sufficient direction to a person skilled in the art to enable him to duplicate the invention - See paragraphs 5 to 8.
Patents of Invention - Topic 1129
Specification and claim - Claim - Scope of invention - A company invented a chemical compound which inhibited the premature vulcanization of rubber and claimed a patent, not only for the chemical compound, but for many other closely related compounds, which could be soundly predicted to perform the same function - Only three of the many compounds were tested - A patent was refused to the untested compounds - The Supreme Court of Canada held that, where the untested compounds could be soundly predicted to perform the same function as the tested ones, a patent should issue to cover all of the compounds as part of the invention - See paragraphs 9 to 24.
Cases Noticed:
Burton Parsons Chemicals v. Hewlett Packard (1974), 3 N.R. 553; [1976] 1 S.C.R. 555, appld. [para. 5].
Leithiser v. Pengo Hydra-Pull of Canada Ltd. (1974), 6 N.R. 301; 17 C.P.R.(2d) 110, dist. [paras. 6,8].
Sandoz Patents Ltd. v. Gilcross Ltd., [1974] S.C.R. 1136, appld. [para. 7].
Olin Mathieson Corporation v. Biorex Laboratories Ltd., [1970] R.P.C. 157, appld. [para. 10].
Société des usines chimiques Rhône-Poulenc v. Jules R. Gilvert Ltd., [1968] S.C.R. 950, dist. [para. 13].
Vanity Fair Silk Mills v. Commissioner of Patents, [1939] S.C.R. 245, appld. [para. 19].
Pfizer Company Limited v. Deputy Minister of National Revenue (1975), 6 N.R. 440; [1977] 1 S.C.R. 456, appld. [para. 20].
Canadian Pacific Limited v. City of Montreal, 21 N.R. 541; [1978] 2 S.C.R. 719, appld. [para. 21].
Northwestern Utilities Limited v. The City of Edmonton (1978), 23 N.R. 565, consd. [para. 22].
Eli Lilly & Co. v. S. & U. Chemicals (1976), 9 N.R. 91; [1977] 1 S.C.R. 536, dist. [para. 25].
R. v. Criminal Injuries Compensation Board, Ex parte Lain, [1967] 2 Q.B. 864, dist. [para. 25].
Olin Mathieson Chemical Corporation v. Biorex Laboratories Limited, [1970] R.P.C. 157, consd. [para. 35].
Statutes Noticed:
Patent Act, R.S.C. 1970, c. P-4, sect. 42 [para. 19]; sect. 44 [para. 18].
Counsel:
D.F. Sim, Q.C., for the appellant;
T.B. Smith, Q.C., and H. Molot, for the respondent.
This case was heard on February 12, 1979, at Ottawa, Ontario, before LASKIN, C.J.C., MARTLAND, RITCHIE, PIGEON, DICKSON, BEETZ, ESTEY, PRATTE and McINTYRE, JJ., of the Supreme Court of Canada.
On June 28, 1979, the judgment of the Supreme Court of Canada was delivered and the following opinions were filed:
PIGEON, J. - see paragraphs 1 to 26;
MARTLAND, J., dissenting - see paragraphs 27 to 51.
LASKIN, C.J.C., RITCHIE, BEETZ, ESTEY, PRATTE and McINTYRE, JJ., concurred with PIGEON, J.
DICKSON, J., concurred with MARTLAND, J.
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