Shell Oil Co. v. Commissioner of Patents, (1982) 44 N.R. 541 (SCC)

• Judge: Ritchie, Dickson, Beetz, McIntyre and Wilson, JJ.
• Court: Supreme Court (Canada)
• Case Date: November 02, 1982
• Jurisdiction: Canada (Federal)
• Citations: (1982), 44 N.R. 541 (SCC);[1982] 2 SCR 536;1982 CanLII 207 (SCC);70 CCC (2d) 575;142 DLR (3d) 117;44 NR 541;1982 CanLII 58 (SCC);67 CPR (2d) 1;142 DLR (3d) 575;16 ACWS (2d) 387;[1982] 2 SCR 582

Shell Oil Co. v. Commr. of Patents (1982), 44 N.R. 541 (SCC)

MLB headnote and full text

Shell Oil Company v. Commissioner of Patents

Indexed As: Shell Oil Co. v. Commissioner of Patents

Supreme Court of Canada

Ritchie, Dickson, Beetz, McIntyre and Wilson, JJ.

November 2, 1982.

Summary:

A company applied for patents for chemical compounds mixed with adjuvants, which were substances added to the compounds to assist their action. The invention claimed was the discovery that the compounds, both new and old, were useful in the regulation of plant growth. The Commissioner of Patents rejected the application. The Federal Court of Appeal in a judgment reported 36 N.R. 1 dismissed the company's appeal. The company appealed.

The Supreme Court of Canada allowed the appeal and held that the discovery of a new use for the compounds was patentable.

Patents of Invention - Topic 1504

Grounds for invalidity - General - Invention - What constitutes - Discovery of new use for known chemical compound - The Supreme Court of Canada held that the discovery that known compounds were useful for the regulation of plant growth was patentable.

Patents of Invention - Topic 1584

Grounds for invalidity - Lack of inventive ingenuity - Chemical processes - The Supreme Court of Canada stated that there is no inventive ingenuity in mixing a compound with a carrier or adjuvant - See paragraph 31.

Patents of Invention - Topic 1584

Grounds for invalidity - Lack of inventive ingenuity - Chemical processes - Discovery of new use for known chemical compound - The Supreme Court of Canada held that the discovery that known compounds were useful for the regulation of plant growth was patentable.

Cases Noticed:

Commissioner of Patents v. Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning, [1964] S.C.R. 49, consd. [para. 5].

Jules R. Gilbert Ltd. v. Sandoz Patents (1971), 64 C.P.R. 14 (Ex. Ct.), aff'd 8 C.P.R.(2d) 210, consd. [para. 5].

Agripat S.A. v. Commissioner of Patents (1976), 52 C.P.R.(2d) 229, consd. [para. 5].

Burton Parsons Chemicals Inc. et al. v. Hewlett-Packard (Canada) Ltd. et al. (1975), 17 C.P.R.(2d) 97, consd. [para. 15].

Commissioner of Patents v. Ciba Limited, [1959] S.C.R. 378, consd. [para. 19].

May & Baker Limited and Ciba Limited, In re (1948), 65 R.P.C. 255, consd. [para. 19].

Continental Soya Company Limited v. J.R. Short Milling Company (Canada) Limited, [1942] S.C.R. 187, consd. [para. 21].

Commissioner of Patents v. Winthrop Chemical Company Incorporated, [1948] S.C.R. 46, consd. [para. 21].

F. Hoffmann-Laroche & Co. Ltd. v. Commissioner of Patents, [1955] S.C.R. 414, consd. [para. 21].

Hickton's Patent Syndicate v. Patents and Machine Improvements Company Ltd. (1909), 26 R.P.C. 339, appld. [para. 27].

Tennessee Eastman v. Commissioner of Patents (1970), 62 C.P.R. 117 (Ex. Ct.), aff'd. [1974] S.C.R. 111, consd. [para. 36].

Lawson v. Commissioner of Patents (1970), 62 C.P.R. 101, consd. [para. 37].

Statutes Noticed:

Patent Act, R.S.C. 1970, c. P-4, sect. 2 [para. 24]; sect. 25 [para. 39]; sect. 36 [para. 33]; sect. 41 [paras. 13, 31].

Counsel:

Russel S. Smart, Q.C., and T.R. Kelly, for the appellant;

Eric Bowie, Q.C., for the respondent.

This case was heard on March 30 and 31, 1982 at Ottawa, Ontario, before RITCHIE, DICKSON, BEETZ, McINTYRE and WILSON, JJ., of the Supreme Court of Canada.

On November 2, 1982 WILSON, J., delivered the following judgment for the Supreme Court of Canada.