MOPOP - Chapter 12 - Endnotes

Subject-Matter and Utility
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Endnotes

1 Apotex Inc. v. Wellcome Foundation Ltd. [2002] SCC 77 [(2002), 21 C.P.R. (4th), 499 (S.C.C.)] at paragraph 37

2 Biolyse Pharma Corporation v. Bristol-Myers Squibb Company [2005] SCC 26 at paragraph 1

3 Shell Oil v. Commissioner of Patents [(1982), 67 C.P.R. (2nd), 1 (S.C.C.)] at pages 10-11

4 Canadian Gypsum Co. Ltd. v. Gypsum, Lime & Alabastine, Canada, Ltd. [1931] Ex.C.R. 180

5 Tennessee Eastman v. Commissioner of Patents [(1972), 8 C.P.R. (2nd), 202 (S.C.C.)]

6 Shell (supra at 3) at pages 10-11.

7 Lawson v. Commissioner of Patents [(1970), 62 C.P.R. (1st), 101 (Ex.Ct.)] at page 109; this definition of "method" was referred with approbation in Shell Oil (supra at 3) at page 15.

8 Physical is used here in the senses of "relating to things perceived through the senses as opposed to the mind; tangible or concrete" and "relating to physics or the operation of natural forces generally". ["Physical adjective", The Oxford Dictionary of English (revised edition), Oxford University Press 2005.] For greater clarity, it is noted that where a chemical art or process is being considered, the terms physical agent and physical object include compositions of matter and the change in character or condition may be physical or chemical in nature.

9 Commissioner of Patents v. Ciba Ltd. [(1959), 30 C.P.R. (1st), 135 (S.C.C.)] at page 141; aff'g [(1957), 27 C.P.R. (1st), 82 (Ex.Ct.)]

10 "machine noun" The Oxford Dictionary of English (revised edition), Oxford University Press 2005; "machine" The Concise Oxford Dictionary of Mathematics, Oxford University Press 2005

11 Harvard College v. Canada (Commissioner of Patents) [2002] S.C.C. 76; [(2002), 21 C.P.R. (4th), 417 (S.C.C.)] at paragraph 159. The court relied on the definitions of the term in the Oxford English Dictionary and the Grand Robert de la langue française.

12 Harvard (supra at 11) at paragraphs 157-163

13 Shell Oil (supra at 3) at page 14

14 Riello Canada, Inc. v. Lambert [(1986), 9 C.P.R. (3rd), 324 (F.C.T.D.)] citing at pages 335 and 336 Reynolds v. Herbert Smith & Co., Ltd. [(1902), 20 R.P.C., 123 (Ch.D.)]

15 Technology is defined as "the application of scientific knowledge for practical purposes, especially in industry", "machinery and equipment developed from scientific knowledge", and "the branch of knowledge dealing with engineering or applied sciences". ["Technology noun", The Oxford Dictionary of English (revised edition), Oxford University Press 2005.]

16 Re Application No. 2,246,933 of Amazon.Com (2009) C.D. 1290 at paragraphs 140-149

17 Commissioner of Patents v. Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning [(1963), 41 C.P.R. (1st), 9 (S.C.C.)] at page 17

18 Harvard (supra at 11) at paragraph 158

19 Monsanto Canada Inc. v. Schmeiser [2004] S.C.C. 34; [(2004), 31 C.P.R. (4th), 161 (S.C.C.)] at paragraph 132, in Arbour J.'s dissension in part.

20 Schlumberger Canada Ltd. v. Commissioner of Patents [(1981), 56 C.P.R. (2nd), 204 (F.C.A.)] at page 206

21 Monsanto (supra at 19) at paragraph 133.

22 Tennessee Eastman (supra at 5); Imperial Chemical Industries Ltd. v. Commissioner of Patents [(1986), 9 C.P.R. (3rd), 289 (F.C.A.)]

23 Harvard College v. Canada (Commissioner of Patents) [2002] S.C.C. 76; [(2002), 21 C.P.R. (4th), 417 (S.C.C.)]

24 Office Practice Regarding Signals C.P.O.R. Vol. 135, No. 33, August 14, 2007. The notice, strictly speaking, was limited in scope to electromagnetic and acoustic signals, but the reasoning applies equally to other forms of energy per se. Many observers point to the equation E = mc2 as "proof" that any form of energy by necessity has mass (i.e. contains matter; is a material product), and that electromagnetic signals (for example) should therefore be patentable. It is noted in this context that the theory of general relativity leads to the conclusion that the mass of any object moving at the speed of light is infinite.

25 Re Application No. 44,282 of Luebs (1971) C.D. 80 (relating to wood panels wherein the novelty lay in particular inscribed designs); Re Application No. ---995 for a Townhouse Building Design [(1979) C.D. 605, 53 C.P.R. (2nd), 211 (P.A.B.)] (relating to architectural plans or designs); Re Application 040,799 of Cowan (1971) C.D. 79

26 Re: Pilot Ink Co. Patent Application No. 565,417 [(1997) C.D. 1224, 86 C.P.R. (3rd), 66 (P.A.B.)]

27 Lawson (supra at 7) at page 115, in respect of "plans".

28 Schlumberger (supra at 20) at page 206

29 Re Application No. 2,246,933 of Amazon.Com (supra at 16)

30 Re Application No. 003,389 of N.V. Organon [(1973) C.D. 144, 15 C.P.R. (2nd), 253 (P.A.B.)]

31 Re Application No. 996,098 of Boussac (1973) C.D. 143

32 Re Dixon Application No. 159,203 [(1978) C.D. 493, 60 C.P.R. (2nd), 105 (P.A.B.)], concluding that a sequence of words on a page, to improve the voice through exercise of the diaphragm, did not of themselves "serve any mechanical purpose" and were by consequence not statutory.

33 Re Application of Boussac (supra at 31)

34 In Re Dixon (supra at 32), the Commissioner cited with approval the conclusions reached in the UK cases Cooper's Application [(1902) 19 R.P.C. 53], Fishburn's Application [(1940) 57 R.P.C. 245]

35 Re Application of Cowan (supra at 25) - "It is well established that rules of play may not be used to substantiate invention".

36 Re Application 055,210 of Boileau (1971) C.D. 93

37 Schlumberger (supra at 20) at page 206

38 It is noted that this is, in fact, the reverse of the usual approach, which is to ask if a statutory contribution has been made. In the case of a use, it is not always easy to disentangle the part of the claim that is the use from the part that is a method. Where, however, it is known that the method aspects of the claim are non-statutory, a conclusion that only a method has been contributed by necessity means that a use has not been. It follows that the claim is, in substance, a method, and therefore (ex hypothesi) non-statutory.

39 Calgon Carbon Corporation v. North Bay (City) [2005] FCA 410 e.g. at paragraph 18

40 Re Application of Abitibi Co. [(1982) C.D. 933, 62 C.P.R. (2nd), 81 (P.A.B.)] at page 91 - an invention must serve to carry out some useful known objective and "cannot be a mere laboratory curiosity whose only claim to utility is as a starting material for further research".

41 Re Application of Organon (supra at 30) at page 258

42 Eli Lilly & Co. v. Marzone Chemicals Ltd. [(1977), 37 C.P.R. (2nd), 3 (F.C.T.D.)] at page 31, aff'd [(1978), 37 C.P.R. (2nd), 37 (F.C.A.)]

43 Feherguard Products Ltd. v. Rocky's of BC Leisure Ltd. [(1995), 60 C.P.R. (3rd), 512 (F.C.A.)] at pages 516 to 517

44 Metalliflex Ltd. v. Rodi & Wienenberger AG [1961] SCR 117 & [(1960), 35 C.P.R. (1st), 49 (S.C.C.)] at pages 53-54

45 Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at page 160 citing 29 Halsbury, 3rd ed., page 59

46 Consolboard (supra at 45) at page 161, citing Unifloc Reagents Ltd. v Newstead Colliery Ltd. [(1943), 60 R.P.C., 165]

47 Northern Electric Co. v. Brown's Theaters Ltd. [1940] Ex.C.R. 36 at paragraph 53 [(1940), 1 C.P.R. (1st), 180 (Ex. Ct.)], aff'd [1941] S.C.R. 224; Wandscheer et al. v. Sicard Limitée [(1944), 4 C.P.R. (1st), 5 (Ex.Ct.)] at page 15-16, aff'd [(1947), 8 C.P.R. (1st), 35 (S.C.C.)]

48 Feherguard (supra at 43) referring to Consolboard (supra at 45) at p. 518

49 Re Application of Organon (supra at 30) at page 258; the criteria "controllable and reproducible by the means disclosed" were commented on by the Federal Court of Appeal in Harvard College v. Canada (Commissioner of Patents) [(2000), 7 C.P.R. (4th), 1 (F.C.A.)] at paragraph 70 (page 26); it was clarified at paragraph 75 that these requirements pertain only to those features necessary to achieve the objects of the invention.

50 Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents) [(1989), 25 C.P.R. (3rd), 257 (S.C.C.)] at page 270

51 Re Application for Patent Containing Claims that Read on Mental Steps [(1972) C.D. xxx, 23 C.P.R. (2nd), 93] ; Re Application 269,230 of Itek Corporation (1981) C.D. 896

52 Apotex Inc. v. Wellcome Foundation Ltd. [2002] SCC 77 [(2002), 21 C.P.R. (4th), 499 (S.C.C.)] at paragraph 46

53 Monsanto Co. v. Commissioner of Patents [(1979), 42 C.P.R. (2nd), 161 (S.C.C.)] at page 176, citing Olin Mathieson Chemical Corp. et al. v. Biorex Laboratories Ltd. et al. [1970] R.P.C. 157

54 Apotex (supra at 52) at paragraph 46

55 Apotex (supra at 52) at paragraph 37

56 Minerals Separation North American Corp. v. Noranda Mines, Ltd. [(1947), 12 C.P.R. (1st), 102 (Ex.Ct.)]

57 Radio Corporation of America v. Raytheon Manufacturing Co. [(1957), 27 C.P.R. (1st), 1 (Ex.Ct.)] at page 14

58 Minerals Separation (supra at 56) at page 111, with these points being reasserted by Thurlow J. in Société des Usines Chimiques Rhone-Poulenc et al. v. Jules R. Gilbert Ltd. et al. [(1968), 55 C.P.R. (1st), 207 (S.C.C.)] at pages 225-226; Wandscheer et al. v. Sicard Limitée [(1947), 8 C.P.R. (1st), 35 (S.C.C.)] at pages 39-40.

59 Consolboard (supra at 45) at pages 154 to 155, Dickson J. quoting H.G. Fox from his Canadian Law and Practice Relating to Letters Patent for Inventions [(1969), 4th Ed.]

60 Consolboard (supra at 45) at page 157

61 Minerals Separation (supra at 56) at page 111

62 Burton Parsons Chemical Inc. v. Hewlett-Packard (Canada) Ltd. [(1976), 17 C.P.R. (2nd), 97 (S.C.C.)]

63 Procter & Gamble Co. v. Bristol-Myers Canada Ltd. [(1978), 39 C.P.R. (2nd), 145 (F.C.T.D.)] at pages 159-160, aff'd [(1979), 42 C.P.R. (2nd), 33 (F.C.A.)]

64 Rice v. Christiani & Nielsen [1929] Ex.C.R. 111 at paragraph 9 rev'd on other grounds

65 Monsanto Co. v. Commissioner of Patents [(1979), 42 C.P.R. (2nd), 161 (S.C.C.)]

66 Re Application 213,113 of X (1978) C.D. 509; Re Application 312,909 of Cruikshank (1980) C.D. 703; Re Application 474,156 of Niderost (1990) C.D. 1159; Re: Application 2,145,007 of Meszaros (2003) C.D. 1256