Case Comment

Reliance Electric Industrial Company et al v.
Northern Telecom Limited

citation(s): (1992), 44 C.P.R. (3d) 161 (F.C.A. per Mahoney J.)

copyright 1997 Donald M. Cameron, Aird & Berlis




The Decision

At p. 163-4:

"I do not read the concluding words of [s.34(a)] as obliging the inventor in his disclosure or claims to describe what respect the invention is new or in what way is useful. He must say what it is he claims to have invented. He is not obliged to extol the effect or advantage of his discovery, if he describes his invention so as to produce it."

At p. 164:

"It seems to me that, in defining "interchangeability" as she has, viz., "[the] flexibility of options which the Appellants argued was the essence of the invention", the learned trial judge has defined it as an effect or advantage of the substructures in the housing. The absence of reference to that advantage in claim 1 is not, in my view, a basis upon which the claim, and its dependent claims, can properly be held invalid for vagueness."

At p. 164:

With respect to the use of drawings, counsel suggests that in my earlier consideration of this matter, I mistakenly applied United States law on the subject and that that law differs from the law in Canada. I do not understand Canadian law to differ from United States law, as that law is described by Mr. Justice Brandeis in Permutit Co. v. Graver Corporation (1931), 284 U.S. 52 at 60. I think it is useful to repeat the quotation from Mr. Justice Brandeis:

"Moreover, while drawings may be referred to for illustration and may be used as an aid in interpreting the specification or claim, they are of no avail where there is a entire absence of description of the alleged invention or a failure to claim it. The statute requires the patentee not only to explain the principle of his apparatus and to describe it in such terms that any person skilled in the art to which it appertains may construct and use it after the expiration of the patent, but also to inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not."


Return to:

Cameron's IT Law: Home Page; Index

Cameron's Canadian Patent & Trade Secrets Law: Home Page; Index

JurisDiction Home Page