Supreme Court of Canada

Shell Oil Co. v. Commissioner of Patents, [1982] 2 S.C.R. 536

Date: 1982-11-02

Shell Oil Company Appellant;

and

The Commissioner of Patents Respondent.

File No.: 16392.

1982: March 30, 31; 1982: November 2.

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

ON APPEAL FROM THE FEDERAL COURT OF APPEAL

Patents—Invention—Chemical compounds mixed with adjuvant—Discovery of a new use for old compounds—Compositions containing new compounds—Claim on compositions—Patent Act, R.S.C. 1970, c. P-4, ss. 2, 36, 41.

Appellant applied for a patent on certain chemical compositions comprising chemical compounds mixed with an adjuvant. The “invention” was the discovery of the usefulness of the compounds, old and new, as plant growth regulators. The Examiner rejected appellant’s application and the Commissioner of Patents and the Federal Court of Appeal upheld his decision. This appeal raised several questions, among them, (1) whether a new use for an old compound is patentable; (2) whether appellant can opt for a patent on the compositions instead of on the new compounds and (3) whether a claim on the compositions violates s. 36 of the Patent Act.

Held: The appeal should be allowed.

Appellant’s idea of applying old compounds to a new use—one capable of practical application and of undisputed commercial value—was an invention within the meaning of s. 2 of the Patent Act. Nothing in the Act, including s. 36, precluded a claim for these compositions which are the practical embodiment of the new knowledge.

The claim for the compositions containing new compounds was also patentable. The patenting of the compounds only would not give appellant protection for its idea of using compounds having a particular chemical structure as plant growth regulators. The mixture of the compounds with the appropriate adjuvants was necessary in order to embody the idea in practical form. Therefore, there was an inventive step involved in

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mixing the compounds with the appropriate carriers for their application to plants. Further, these composition claims were not subject to the restrictions of s. 41 (products intended for food or medicine) and no separate claim was being made for the compounds.

Hickton’s Patent Syndicate v. Patents and Machine Improvements Co. (1909), 26 R.P.C. 339, applied; Commissioner of Patents v. Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning, 1963 2 (SCC), [1964] S.C.R. 49; Jules R. Gilbert Ltd. v. Sandoz Patents Ltd. (1970), 1970 1878 (CA EXC), 64 C.P.R. 14 (Ex. Ct.) affirmed 1972 195 (SCC), [1974] S.C.R. 1336; Agripat S.A. v. Commissioner of Patents (1977), 1977 3488 (FCA), 52 C.P.R. (2d) 229 (F.C.A.) affirming (1976), 1976 2678 (CA CP), 52 C.P.R. (2d) 220; Burton Parsons Chemicals Inc. v. Hewlett-Packard (Canada) Ltd., 1974 2 (SCC), [1976] 1 S.C.R. 555; Commissioner of Patents v. Ciba Ltd., 1959 62 (SCC), [1959] S.C.R. 378; In Re May & Baker Limited and Ciba Ltd. (1948), 65 R.P.C. 255, considered; Tennessee Eastman Co. v. Commissioner of Patents (1970), 1970 1884 (CA EXC), 62 C.P.R. 117 (Ex. Ct.) affirmed 1972 167 (SCC), [1974] S.C.R. 111; Continental Soya Co. v. J.R. Short Milling Company (Canada) Ltd., 1942 45 (SCC), [1942] S.C.R. 187; Commissioner of Patents v. Winthrop Chemical Co., 1948 25 (SCC), [1948] S.C.R. 46; F. Hoffmann-Laroche & Co. v. Commissioner of Patents, 1955 91 (SCC), [1955] S.C.R. 414; Lawson v. Commissioner of Patents (1970), 1970 1879 (CA EXC), 62 C.P.R. 101, referred to.

APPEAL from a judgment of the Federal Court of Appeal (1980), 1980 4544 (FCA), 54 C.P.R. (2d) 183, 36 N.R. 1, dismissing appellant’s appeal from the decision of the Commissioner of Patents rejecting appellant’s patent application. Appeal allowed.

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

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

Reasons for Judgment

The judgment of the Court was delivered by

WILSON J.—The appellant applied for a patent on certain chemical compositions comprising chemical compounds mixed with an adjuvant. An adjuvant is simply a substance added to a prescription to facilitate the action of the principal ingredient. Some of the compounds were new but unpatented; others were old. The new compounds were initially included in the claim for patent but the

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claim in respect of them was subsequently withdrawn by the appellant.

The appellant describes its invention as “the surprising discovery that compounds having a specific chemical structure have useful properties in respect of the regulation of the growth of plants”.

It elaborates on its discovery in its patent application:

It has now been discovered that certain ethane-sulphinic acids and oxygen or sulphur esters thereof, and certain ethanesulphinamides, can be employed to regulate and/or modify the growth of plants. Depending on variables such as the species of plant treated, plant maturity at time of treatment, the quantity and concentration of growth regulant used, the specific compound used, and the formulation employed, these compounds when applied to the plant locus exhibit a wide variety of useful plant growth regulating properties. Some of the plant growth regulant effects which have been observed include the promotion of early and more uniform fruit ripening and/or abscission, acceleration of leaf abscission, promotion of flowering, stimulation of sprouting of tubers, stimulation of seed germination, destruction of apical dominance in tubers causing lateral buds to sprout, increased formation of root initials on tomato stems, the causation of tomato leaf epinasty and dwarfing of plants. It will be recognized that biological response such as that realized from the process of the invention, when utilized as a cultural practice in the agricultural industry, can provide a valuable means of increasing crop productivity while at the same time reducing the labour and expense necessary to produce the crops.

The appellant acknowledges that this discovery having been made there is nothing inventive in mixing these compounds with appropriate adjuvants. Indeed, it acknowledges that the adjuvants are inert carriers commonly used in compositions to be applied to plants. The “invention”, the appellant stresses, is the discovery of the usefulness of the compounds, old and new, as plant growth regulators and this is what it wants to protect by a patent on its chemical compositions.

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The Examiner rejected its claim and was upheld by the Commissioner of Patents. The Federal Court dismissed the appellant’s appeal from the decision of the Commissioner. It is clear that all three adjudicators thought that the application was covered by the principle enunciated in Commissioner of Patents v. Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning, 1963 2 (SCC), [1964] S.C.R. 49, and applied in Jules R. Gilbert Ltd. v. Sandoz Patents Ltd. (1970), 1970 1878 (CA EXC), 64 C.P.R. 14 (Ex. Ct.), aff’d 1972 195 (SCC), [1974] S.C.R. 1336, and Agripat S.A. v. Commissioner of Patents (1977), 1977 3488 (FCA), 52 C.P.R. (2d) 229. It is necessary therefore to consider these judgments in some detail.

In Farbwerke Hoechst the applicant sought a patent on anti-diabetic compositions consisting of anti-diabetic compounds diluted by a carrier. It already had a patent on the compounds. The Commissioner rejected the claim on two grounds:

(1) that the applicant was entitled to only one patent for an invention and the composition claims did not inventively distinguish from the compound claims in respect of which a patent had already been granted; and

(2) that the claims related to substances prepared by a chemical process and intended for medicine and were prohibited by s. 41(1) of the Patent Act because they amounted to an attempt to protect the substance otherwise than by a patentable process by which it was produced.

The appellant appealed to the Exchequer Court which allowed the appeal on the ground that, although the mixture was intended for a medicine, it was a new substance not prepared or produced by a chemical process. It held that the anti-diabetic compositions were new and useful and therefore patentable. It also held that there was inventive ingenuity in the compositions. The Commissioner appealed to the Supreme Court of Canada. This Court held that, in effect, the applicant was asking for a patent on a medicine in respect of which it

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already had a patent; only this time it was seeking to patent it in a diluted form. It held that the addition of an inert carrier to the original compound was nothing more than dilution and did not result in a further invention over and above that of the compound itself. Quoting from the judgment of Judson J. at pp. 53-54:

The mixing of a patented chemical substance with a carrier is not new and it is not the result of inventive ingenuity. It is, of course, a substance, as the learned President has found, but it is still a substance identical in all respects except dilution with a substance produced by a chemical process and for which a patent has been granted under s. 41 (1) of the Patent Act.

The decision under appeal is of extreme practical significance. It gives effect to form rather than substance. The claim to a pharmaceutical composition with which the present appeal is concerned is free from the limitations imposed by s. 41(1) and a person who obtained a patent in this way could assert such claims against anyone using the pharmaceutically active ingredient constituting the substance of the invention regardless of the process whereby it was produced.

Judson J. went on to adopt the following passages from the reasons of the Commissioner [at pp. 54-55]:

The essential inventive feature of the claimed compositions resides in the medicinally active chemical compound, and not in the fact that this compound is associated with a carrier. It is general practice in the medicinal art to associate an active compound with a suitable diluting or carrying agent because, usually, such a compound cannot be used in the pure form.

In this case there is no question of second invention involving the discovery of a new and particular carrier which imparts a special, new, and unexpected character to the compositions. To permit the claiming of a medicine mixed with a carrier in per se form, rather than in process-dependent form, would mean that all new medicines could be claimed free of the restrictions of Section 41 in the only practical form in which they may be used. This, of course, would defeat the whole purpose of the Section.

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The Farbwerke Hoechst decision was followed by the Exchequer Court in Jules R. Gilbert Ltd. v. Sandoz Patents Ltd., supra, in which a claim of patent for thioridazine and for pharmaceutical compositions containing thioridazine was made. Thurlow J., in rejecting the claim for the compositions, said at p. 35:

I find, therefore, that the discovery of the usefulness of thioridazine and of the usefulness of the chemical procedure for producing it represents a patentable invention. On the other hand I am also of the opinion that pharmaceutical compositions consisting of a therapeutically acceptable amount of thioridazine associated with a carrier represent no invention whatsoever save in so far as thioridazine itself is an invention.

And later on the same page he states:

These last-mentioned claims, as I see it, cannot stand as claims in respect of any inventive step involved in the mixture of a substance with a carrier since there is no invention involved in such a step. Vide Comm’r Pat. v. Farbwerke Hoechst A.G., 1963 2 (SCC), 41 C.P.R. 9, [1964] S.C.R. 49, 25 Fox Pat. C. 99. Nor can they stand as claims in respect of the invention of thioridazine itself both because claims 1 to 9 represent the full extent of the protection to which the defendant is entitled in respect of that invention and because in the context of all the claims they tend to go further than the protection to which the defendant is entitled, as defined in s. 46 of the Patent Act, in respect of the invention of thioridazine and to monopolize, independently of the other claims, compositions containing thioridazine, and thus to restrict the use of thioridazine in a particular way even by one into whose possession it may lawfully come whether by express or implied or compulsory licence.

On the appeal to the Supreme Court of Canada, Pigeon J. affirmed Mr. Justice Thurlow’s rejection of the composition claims on the basis that no inventive step was involved in the mixture of a pharmaceutical compound with an appropriate carrier.

In Re Application No. 132,421 [Agripat] (1976), 1976 2678 (CA CP), 52 C.P.R. (2d) 220 the Commissioner rejected a claim for patent on insecticide compositions on the basis of Farbwerke Hoechst and Jules R. Gilbert Ltd. v. Sandoz Patents Ltd. He allowed

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the claim for the insecticide compound but disallowed it in composition form fixed with an adjuvant. His decision was upheld in the Federal Court of Appeal (Agripat S.A. v. Commissioner of Patents (1977), 1977 3488 (FCA), 52 C.P.R. (2d) 229), Heald J. stating in very brief reasons:

We are all of the opinion that the Com’r of Patents v. Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning (1963), 1963 2 (SCC), 41 C.P.R. 9, [1964] S.C.R. 49, 25 Fox Pat. C. 99, the Sandoz Patents Ltd. v. Gilcross Ltd. et al. (1972), 1972 195 (SCC), 8 C.P.R. (2d) 210, 33 D.L.R. (3d) 451, [1974] 2 S.C.R. 1336, and Rohm & Haas Co. v. Com’r of Patents (1959), 1959 782 (CA EXC), 30 C.P.R. 113, [1959] Ex. C.R. 153, 18 Fox. Pat. C. 140, cases are indistinguishable on any valid grounds from the case at bar. The Commissioner, correctly, in our view, interpreted and applied the principles established in those cases, in so far as they are relevant to claims 5 to 11 inclusive herein.

Counsel for the appellant makes a number of submissions in relation to these cases. He submits that they stand for the proposition that there is no inventive ingenuity in mixing a compound with a carrier. Accordingly, you cannot claim a patent on compositions containing compounds which are themselves the subject of a claim or in respect of which a patent has already issued. However, in this case, counsel says, the appellant is not claiming for the compounds. It withdrew its claim for those. These cases therefore present no obstacle to its claim for patent on the compositions even if there is no inventive ingenuity in the mixing process. In effect, counsel for the appellant submits that the appellant can elect whether to claim for the compounds themselves or for the compositions containing them. He acknowledges that such an election is not open in the case of claims falling within s. 41 of the Patent Act, i.e. claims involving substances intended for food or medicine, because claims in respect of those have to be process-related and, as Mr. Justice Judson pointed out in Farbwerke Hoechst, it would be an easy way to get around the section if a patent could be obtained on the compositions. It would then not be necessary for the applicant to identify the process by which the active ingredient in the composition, i.e. the compound, was produced and the patentee would have protection against any one producing that

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compound regardless of the process by which they produced it.

The appellant submits, however, that the compositions which are the subject of this application have nothing to do with food or medicine and therefore do not fall within s. 41. The compounds contained in the compositions which are the subject of this application need not be process-related. No violence is done to s. 41 by granting a patent on these compositions. The appellant submits that there is no general principle of patent law, and indeed no authority at all, for the proposition that compositions consisting of new compounds having useful properties and mixed with conventional carriers cannot be claimed as a practicable invention when the invention is not subject to the legal impediments of s. 41. The appellant emphasizes that the invention claimed here is not in the substances themselves but in the discovery that they are useful as plant growth regulators. He submits that it makes no difference in that context whether the compounds are old or new; the inventive step is in the use and not in the manufacture.

The appellant relies on Burton Parsons Chemicals Inc. v. Hewlett-Packard (Canada) Ltd., 1974 2 (SCC), [1976] 1 S.C.R. 555, in support of his submission that s. 41 of the Patent Act has no application in a case such as this. In Burton Parsons the applicant was seeking a patent on a cream to be used in electrocardiograms and the process for making such a cream. The purpose of the cream was to provide a good electrical contact between the machine’s electrodes and the body. The cream was composed of an aqueous emulsion containing sufficiently highly ionizable salt of about 5 percent common salt to provide good electrical conductivity. The Commissioner issued the patent but the Court of Appeal held the claims invalid on the ground that some such combinations could not be used because they were incompatible with normal human skin. The claim for patent was therefore too widely framed and had to be rejected.

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On appeal to the Supreme Court of Canada, Pigeon J. allowed the appeal and declared the claims to be valid. He pointed out that under s. 36 of the Act the specification must be such as to enable “any persons skilled in the art or science to which it pertains” to prepare the substance and any one skilled in this art would know to avoid toxic substances in the preparation of the cream. Mr. Justice Pigeon then dealt with the attack under s. 41(1) of the Act and in particular the question whether this cream was a “substance prepared or produced by chemical processes and intended for food or medicine”. He found that although most of the substances mentioned in the patent as suitable for the preparation of the cream were undoubtedly “chemicals” in the usual sense of the word, the cream was not itself “intended for medicine” within the meaning of s. 41. The section therefore had no application.

The appellant submits that no confidence can be placed in the decision in Agripat which extended the application of s. 41 of the Act to an insecticide having regard to Mr. Justice Pigeon’s comments on the scope of the section in Burton Parsons. There was nothing in the Federal Court of Appeal’s judgment to indicate that it addressed its mind to this question at all.

While the Burton Parsons case certainly assists the appellant on the issue of the applicability of s. 41, I do not think it assists it, as it claims, with respect to the compositions containing the old compounds. It seems fairly clear that in Burton Parsons the inventive ingenuity was in the combination itself. There was a chemical reaction in the emulsifier and therefore s. 36(2) was not offended. This, in my view, distinguishes Burton Parsons from Farbwerke Hoechst and Jules R. Gilbert Ltd. v. Sandoz Patents Ltd. in which the inventive ingenuity lay in the compounds only and there was no further invention involved in their mere dilution with an inert carrier.

The appellant also relies with respect to the compositions containing the old compounds on the

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judgment of this Court in Commissioner of Patents v. Ciba Ltd., 1959 62 (SCC), [1959] S.C.R. 378. The issue in Ciba was whether the application of a known method to known materials to produce a new and useful compound was patentable. Speaking for the Court, Mr. Justice Martland held that it was, following the judgment of Jenkins J. in In re May & Baker Limited and Ciba Ltd. (1948), 65 R.P.C. 255. It was argued in May & Baker that no inventive ingenuity was involved. Jenkins J. rejected that submission. He said at p. 279:

The fact that the methods described in the specification were in themselves known methods being admitted on the face of the specification itself, it is obvious that the Respondents could only claim novelty for them as part of the entire process consisting of their application to the particular classes of materials described in the specification so as to produce the new substances claimed. If the entire process was in fact new, in the sense that no one had done or projected the doing of it before, and that the new substances produced had never been made or projected before, then, assuming subject-matter, as it is right to do in considering novelty, I think the objection based on want of novelty must fail.

And again, at p. 295, he said:

Now it seems to me that in considering this question one must begin by determining what is the character of the inventive step to which the invention as claimed by the unamended specification would, if valid, have owed its validity as an invention. If I am right in the conclusions stated earlier in this judgment with regard to subject-matter, there is no inventive step, no element of discovery, merely in making new substances by known methods out of known materials.

What is indispensably necessary in order to elevate a process of this description from a mere laboratory exercise to the status of a patentable invention is the presence of some previously undiscovered useful quality in the substances produced. Assuming that the substances produced do possess some previously undiscovered useful quality, for example some remarkable value as drugs, then although the methods are known and the materials are known yet the application of those methods to those materials to produce those new substances may amount

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to a true invention, because of the discovery that those particular known materials when combined by those methods not merely produce those new substances but produce, in the shape of those new substances, drugs of remarkable value.

I think it necessarily follows that the identity of the materials chosen (by luck or good management) by the supposed inventor for the production of his new substances is of the essence of his invention. He must, so to speak, be in a position to repel critics by saying: “You tell me that there is nothing in combining known substances A and B to produce my new substance C, because any chemist could have worked the combination from the books and would have known as a matter of chemical definition that C would be the result. But my great secret, my discovery, is that these particular known substances A and B when combined do not merely produce a new substance answering the chemical description C (which according to accepted chemical theory was a foregone conclusion) but produce in the shape of C a remarkably valuable drug.”

Mr. Justice Martland, applying that reasoning in Ciba, concluded at p. 383:

Is it a new process? Is the element of novelty precluded because it consists of a standard, classical reaction used to react known compounds? In my opinion the process in question here is novel because the conception of reacting those particular compounds to achieve a useful product was new. A process implies the application of a method to a material or materials. The method may be known and the materials may be known, but the idea of making the application of the one to the other to produce a new and useful compound may be new, and in this case I think it was.

It is of interest to note that counsel for the Commissioner in Ciba attempted to distinguish May & Baker on the basis that it was governed by the English patent legislation which contained no provision similar to the definition of “invention” contained in s. 2 of the Canadian statute. He argued that English law did not distinguish between “process” and “product” but this distinction had been clearly affirmed in Canada in cases such as Continental Soya Co. v. J.R. Short Milling Company (Canada) Ltd., 1942 45 (SCC), [1942] S.C.R. 187, Commissioner of Patents v. Winthrop Chemical Co., 1948 25 (SCC), [1948] S.C.R. 46 and F. Hoffmann-Laroche

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& Co. v. Commissioner of Patents, 1955 91 (SCC), [1955] S.C.R. 414. Counsel therefore argued that under Canadian law an “invention” must be a process or a product, but not both, and each must satisfy the statutory requirements before a patent can issue in respect of it. Mr. Justice Martland seems to have accepted this analysis of Canadian patent law but went on to find that the claims involved in Ciba were process claims and that they did disclose an invention because they produced compounds which were both new and useful. Counsel for the Commissioner in the instant case relies on the distinction between “process” and “product” and says that in this case the invention in the case of the compositions containing the new compounds lies solely in the compounds, i.e. they are product claims. He points out that the appellant agrees that there is no inventive ingenuity in mixing them with the adjuvants. The composition claims cannot therefore, he submits, be elected in preference to the compound claims. Unlike Ciba, the claims in respect of the compositions containing the new compounds cannot be treated as process claims because the inventive ingenuity stops with the compounds themselves.

The central issue in this case, it seems to me, is not directly covered by any of these authorities although all are helpful in providing the jurisprudential context into which the issue must fit. The appellant has discovered that compounds having a specific chemical structure have useful properties as plant growth regulators. Although some of these compounds were already known, their usefulness for this particular purpose was not known. This new use for these old compounds is therefore the appellant’s “invention” with respect to these old compounds. In order to use them for this purpose, it has mixed them with the appropriate adjuvants for their application to plants. Other compounds having the same chemical structure have been produced by the appellant and are therefore new compounds. They are per se an “invention” of the appellant and the respondent acknowledges that

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they are patentable. The appellant, however, has withdrawn its claim for patent on those and seeks instead a patent on compositions formed by mixing them with appropriate adjuvants.

The following questions seem to me to arise on these facts:

The old compounds:

(1) Is a new use for an old compound patentable under the Act?

(2) If so, how is it patented?

The new compounds:

(1) Does the principle in the Farbwerke Hoechst line of cases apply to an invention not falling within s. 41 of the Act?

(2) If not, does an applicant have an election whether to claim for the new compounds or for the compositions containing them?

(3) Does a claim for the compositions violate s. 36 of the Act?

The old compounds:

No authority was presented to the Court dealing with a claim based on the discovery of a new use for an old compound and my research has disclosed none. I turn therefore to the definition of “invention” in s. 2 of the Act which reads:

“invention” means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter;

If we accept the submission of counsel for the Commissioner that a claim for the compositions containing the old compounds cannot be dignified into a process claim because there is admittedly no novelty in combining the compounds with the adjuvants, then Ciba is distinguishable. It is not the process of mixing the old compounds with the known adjuvants which is put forward as novel. It is the idea of applying the old compounds to the new use as plant growth regulators; the character

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of the adjuvants follows inevitably once their usefulness for that purpose has been discovered. What then is the “invention” under s. 2? I believe it is the application of this new knowledge to effect a desired result which has an undisputed commercial value and that it falls within the words “any new and useful art”. I think the word “art” in the context of the definition must be given its general connotation of “learning” or “knowledge” as commonly used in expressions such as “the state of the art” or “the prior art”. The appellant’s discovery in this case has added to the cumulative wisdom on the subject of these compounds by a recognition of their hitherto unrecognized properties and it has established the method whereby these properties may be realized through practical application. In my view, this constitutes a “new and useful art” and the compositions are the practical embodiment of the new knowledge.

If I am right that the discovery of a new use for these compounds which is capable of practical application is an “invention” within the meaning of the definition, I can find nothing in the statute which would preclude a claim for these compositions. Section 36 does not seem to present a barrier because the inventive ingenuity here lies in the new use for the old compounds and not in the compounds themselves. Having discovered the use, the appellant has then combined the compounds with the appropriate carriers for their application to plants. It is not, in my view, necessary in the case of the discovery of a new use for an old compound that the combination of the compound with the adjuvant be itself novel in any sense other than that it is required in order to give effect to this particular use of the compound. This is not a case where the inventive ingenuity is alleged to lie in the combination; the combination is simply the means of realizing on the newly discovered potential of the compounds. This is a case where the inventive ingenuity is in the discovery of the new use and no further inventive step is required in the application of the compounds to that use, i.e. in the preparation of the appropriate compositions.

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The case which, in my view, is most closely analogous to this one is Hickton’s Patent Syndicate v. Patents and Machine Improvements Co. (1909), 26 R.P.C. 339. The applicant in that case had an idea for equalizing the consumption of thread on lace-making machines by the process known as “shogging”. There was nothing new about “shogging”. It was a technique customarily employed in creating a pattern in the piece of lace being made. But it had not hitherto been thought of as a means of equalizing thread consumption. This was done by hand by interchanging the bobbins. It was clear on the evidence that once the idea was formed, no further inventive ingenuity was required in order to put it into effect. The plaintiff, who had obtained a patent on the idea and on its method of carrying it out, brought an action for infringement. The action was tried by Swinfen-Eady J. who held that although the idea of using the technique of “shogging” to equalize thread consumption was new, there was no invention involved in carrying out the idea. The plaintiffs patent was accordingly invalid for want of subject-matter and its action failed. The plaintiff appealed and in allowing the appeal Cozens-Hardy M.R. said at p. 347:

The learned Judge in his judgment states a proposition which, with the greatest possible respect, seems to me to be a great deal too wide. “An idea may be new and original and very meritorious, but unless there is some invention necessary for putting the idea into practice it is not patentable”. That, I venture to say, is not in accordance with the principles which have hitherto been applied in Patent cases, and I do not think it ought to be recognised as the law. When once the idea of applying some well-known thing for a special and new purpose is stated, it may be very obvious how to give effect to that idea, and yet none the less is that a good subject-matter for a Patent.

In his concurring reasons, Fletcher Moulton L.J. was even more critical of the trial judge’s statement. I quote from his reasons at the same page:

After the judgment of the Master of the Rolls I do not intend to enter into the facts of the case, but I do wish to deal with the dictum of the learned Judge in the Court below, which really gives the ground for his decision.

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The Defendants contend that although the idea of traversing by “shogging” in order to equalise is new, yet it is not proper subject-matter for a Patent as no invention whatever was necessary to carry it out. The learned Judge says: “An idea may be new and original and very meritorious, but unless there is some invention necessary for putting the idea into practice it is not patentable.” With the greatest respect for the learned Judge, that, in my opinion, is quite contrary to the principles of patent law, and would deprive of their reward a very large number of meritorious inventions that have been made. I may say that this dictum is to the best of my knowledge supported by no case, and no case has been quoted to us which would justify it. But let me give an example. Probably the most celebrated Patent in the history of our law is that of Bolton and Watt, which had the unique distinction of being renewed for the whole fourteen years. The particular invention there was the condensation of the steam, not in the cylinder itself, but in a separate vessel. That conception occurred to Watt and it was for that that his Patent was granted, and out of that grew the steam engine. Now can it be suggested that it required any invention whatever to carry out that idea when once you had got it? It could be done in a thousand ways and by any competent engineer, but the invention was in the idea, and when he had once got that idea, the carrying out of it was perfectly easy. To say that the conception may be meritorious and may involve invention and may be new and original, and simply because when you have once got the idea it is easy to carry it out, that that deprives it of the title of being a new invention according to our patent law, is, I think, an extremely dangerous principle and justified neither by reason, nor authority.

It seems to me that in Hickton’s Patent the English Court of Appeal found that an idea was patentable notwithstanding the lack of any novelty in its implementation. No further invention was required in putting it into practice. As Lord Cozens-Hardy put it:

When once the idea of applying some well-known thing for a special and new purpose is stated, it may be very obvious how to give effect to that idea, and yet none the less is that a good subject-matter for a Patent.

In my view, this is the thrust of the appellant’s appeal to this Court. It says: “I recognize that these compounds are old; I acknowledge that there is nothing inventive in mixing them with these adjuvants once their properties as plant growth

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regulators have been discovered; but I have discovered these properties in those old compounds and I want a patent on the practical embodiment of my invention”. I think he is entitled to receive it.

The new compounds:

I turn now to the claims for the compositions containing new compounds. As already mentioned, the main objection to these claims was based on the Farbwerke Hoechst line of cases and in particular the Federal Court of Appeal decision in Agripat applying the reasoning in Farbwerke Hoechst to substances not intended for food or medicine and therefore not subject to the restrictions of s. 41 of the Act. The brief reasons of Heald J. in Agripat have already been quoted.

It seems to me that Mr. Justice Heald was in error when he stated that the Farbwerke Hoechst line of cases “are indistinguishable on any valid grounds from the case at bar” and that the Commissioner therefore “correctly …interpreted and applied the principles established in those cases” to Agripat. They were, in my view, distinguishable in a very material respect, namely that they were all cases falling within s. 41 and Agripat was not. I do not think it is possible to read those cases without concluding that one of the reasons for the rejection of the composition claims in those cases was that to allow them would permit the applicants to avoid the impact of s. 41 in respect of substances clearly falling within it. I agree with counsel for the appellant that these cases did not establish a broad principle that compositions containing new compounds mixed with an inert carrier were not patentable. They did establish, however, that no inventive ingenuity is involved in mixing a compound with a carrier. Accordingly, if the compound is patented, there is no invention in the composition. That proposition, in my view, makes eminent good sense whether the substance is covered by s. 41 or not and I think it affords an adequate basis for the result reached by the Federal Court of Appeal in Agripat.

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Agripat is, of course, distinguishable from the instant case in that no claim is being made for the compounds in this case. Is the appellant correct then in saying that it has a right of election?

In order to answer this question it is, I believe, necessary to consider the effect of s. 36 of the Act. That section requires the applicant to describe in the specification his “invention” and “its operation or use” and to “particularly indicate and distinctly claim the part, improvement or combination which he claims as his invention”. Subsection (2) then provides:

(2) The specification shall end with a claim or claims stating distinctly and in explicit terms the things or combinations that the applicant regards as new and in which he claims an exclusive property or privilege.

In cases such as Farbwerke Hoechst it seems to me that s. 36 would constitute a barrier to a claim in respect of the compositions even if no claim had been made or patent existed in these cases in respect of the compounds. Because those cases held that there was no further inventive step involved in mixing the compounds with inert carriers, a claim for the compositions in these cases would, it seems to me, extend beyond the scope of the invention and violate s. 36. The applicants therefore would have no election in such cases. They could not opt for a patent on the compositions instead of on the compounds. Does the appellant here face the same problem?

It seems to me that it does not. If I am right in my earlier conclusion in relation to the compositions containing the old compounds, namely that there is inventive ingenuity in the idea of using compounds having this particular chemical structure as plant growth regulators, then the appellant’s invention in the case of the new compounds did not stop with the creation of the compounds and the patenting of the compounds would not give it protection for its idea. The mixture of the compounds with the appropriate adjuvants was necessary in order to embody the idea in practical form. It cannot therefore be said that in this case there is

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no inventive step involved in mixing the compounds with carriers appropriate for their application to plants. It is true, as counsel for the Commissioner submitted, that once it is decided that these compounds are to be applied to plants, no inventive step is involved in selecting the appropriate carriers; they are common knowledge in the field. But I think this is to miss the point. A disembodied idea is not per se patentable. But it will be patentable if it has a method of practical application. The appellant has shown a method of practical application in this case.

In Tennessee Eastman Co. v. Commissioner of Patents (1970), 1970 1884 (CA EXC), 62 C.P.R. 117 (Ex. Ct.), aff’d 1972 167 (SCC), [1974] S.C.R. 111, the applicant sought a patent on a method of closing incisions following surgery by the use of an adhesive substance discovered to have a marked affinity for adhering to living tissue. The Commissioner refused the patent on the basis that this was not the kind of discovery (the adhesive itself not being new) which fell within the definition of “invention” in the Act. In particular, he found that it was not an “art” because it was useful only in the process of surgical or medical treatment and produced no result in relation to trade, commerce or industry. The applicant appealed to the Exchequer Court and the issue there was limited to the question whether this use of the adhesive fell within the meaning of new and useful “art” or “process” within the meaning of the Patent Act. It was held that it did not for the reasons given by the Commissioner. In effect, it was not patentable because it was essentially non-economic and unrelated to trade, industry or commerce. It was related rather to the area of professional skills. The Court, however, affirmed that “art” was a word of very wide connotation and was not to be confined to new processes or products or manufacturing techniques but extended as well to new and innovative methods of applying skill or knowledge provided they produced effects or results commercially useful to the public.

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An effort to articulate this broader concept of the term “art” was made by Cattanach J. in Lawson v. Commissioner of Patents (1970), 1970 1879 (CA EXC), 62 C.P.R. 101. In that case a patent was being sought on a new method of describing the boundaries of a plot of land. The application was rejected, again not because the subject-matter of the application was not an “art” within the meaning of the definition in the Act but because, like the new use for the adhesive in Tennessee Eastman, it related to professional skills rather than to trade, industry or commerce. In the course of his reasons Mr. Justice Cattanach said at pp. 109-10;

An art or operation is an act or series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or of condition. It is abstract in that, it is capable of contemplation of the mind. It is concrete in that it consists in the application of physical agents to physical objects and is then apparent to the senses in connection with some tangible object or instrument.

In the earlier development of patent law, it was considered that an invention must be a vendible substance and that unless a new mode of operation created a new substance the invention was not entitled to a patent, but if a new operation created a new substance the patentable invention was the substance and not the operation by which it was produced. This was the confusion of the idea of the end with that of means. However, it is now accepted that if the invention is the means and not the end, the inventor is entitled to a patent on the means.

There is no question as to the practical utility of the appellant’s discovery. It is no more a disembodied idea than the applicant’s discovery of a method of equalization of thread consumption in Hickton’s Patent. It is a newly discovered means of regulating the growth of plants and is accordingly a “new and useful art” having economic value in the field of trade, industry and commerce. I find no obstacle in s. 36 or any other provision of the Act to the grant of a patent to the appellant on these compositions. I make no observation, however, on whether or not the appellant can succeed in a subsequent application for patent on a subor-

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dinate element of its invention, namely the compounds themselves. This is not before us, the appellant having abandoned such a claim at an early stage of the proceedings.

I would allow the appeal, set aside the judgment of the Federal Court of Appeal and the decision of the Commissioner, and refer the matter back to the Commissioner for the issue of a patent on claims 1 to 11 inclusive. I would make no order as to costs having regard to s. 25 of the Patent Act.

Appeal allowed.

Solicitors for the appellant: Smart & Biggar, Ottawa.

Solicitor for the respondent: R. Tassé, Ottawa.