Case Comment

Pioneer Hi-Bred Ltd. v.
Canada (Commissioner of Patents)

citation(s): (1989) 25 C.P.R. (3d) 257 (S.C.C. per Dickson C.J)

copyright 1997-2007 Donald M. Cameron




The Decision

At p. 267-268:

"In summary, the Patent Act requires that the applicant file a specification including disclosure and claims: Consolboard Inc., supra, at p. 157. Canadian courts have stated in a number of cases the test to be applied in determining whether disclosure is complete. The applicant must disclose everything that is essential for the invention to function properly. To be complete, it must meet two conditions: it must describe the invention and define the way it is produced or built: Thorson P. in Minerals Separation North American Corp. v. Noranda Mines, Ltd. (1947), 12 C.P.R. at p. 102 at p. 111, [1947] Ex. C.R. 306, 6 Fox Pat. C. 130 (Ex. C.R.)). The applicant must define the nature of the invention and describe how it is put into operation. A failure to meet the first condition would invalidate the application for ambiguity, while a failure to meet the second invalidates for insufficiency. The description must be such as to enable a person skilled in the art or field of the invention to produce it using only the instructions contained in the disclosure (Pigeon J. in Burton Parsons Chemicals Inc. v. Hewlett-Packard (Canada) Ltd. (1974), 17 C.P.R. (2d) 97 at p. 104, 54 D.L.R. (3d) 711, [1976] 1 S.C.R. 555 (S.C.C.); Monsanto Co. v. Com'r of Patents (1979), 42 C.P.R. (2d) 161 at p. 173, 100 D.L.R. 385, [1979] 2 S.C.R. 1108 (S.C.C.)) and once the monopoly period is over, to use the invention as successfully as the inventor could at the time of his application (Minerals Separation, supra, at p. 111)."

At p. 270:

Finally, I am unable to share appellant's argument when it says that the fact the invention was discovered partly by chance does not necessarily mean "that someone else could not retrace the path that he described in the specification". It is none the less clear that apart from steps which appear to be obvious and common knowledge for an experimenter skilled in the area, a person to whom the disclosure is addressed "is not required to exercise or to be possessed of more, and if the specification contains something that necessitates the working out of a problem, the discovery of the required steps, the patent cannot be supported": see Fox, supra, at p. 171. It is apparent in the case at bar that the steps required for selective production present no problem. However, an experimenter could only discover the steps involved in crossing by empirical means. Without hypothesizing as to why appellant did not comply with the disclosure requirement, I have to say that either Hi-Bred was negligent in failing to describe its procedure correctly or it did indeed make the discovery by chance.


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