Case Comment

Tye-Sil Corp. Ltd. v.
Diversified Products Corp. et al

citation(s): (1991), 35 C.P.R. (3d) 350

copyright 1997 Donald M. Cameron, Aird & Berlis




The Decision

At p. 361:

"I wish to point out, at the outset, that the cumulative tests formulated by Gibson J. in Reeves Brothers Inc. v. Toronto Quilting & Embroidery Ltd. (1978), 43 C.P.R. (2d) 145 at p. 157 (F.C.T.D.), which were accepted, without analysis, in several subsequent Canadian cases, including some in this court and were relied on by the respondents in their factum, have generally been used out of context: Johnson Controls Inc. v. Varta Batteries Ltd. (1984), 80 C.P.R. (2d) 1 at p. 11, 3 C.I.P.R. 1, 53 N.R. 6; Windsurfing Int'l Inc. v. Trilantic Corp. (1985), 8 C.P.R. (3d) 241 at p. 255, 63 N.R. 218; see also William L. Hayhurst, Q.C. "Recent Developments in Canadian Law: Intellectual Property" (1987), 19 Ottawa L. Rev. 137 at p. 157. Gibson J. had only enumerated various formulations for the test of anticipation retained in earlier decisions and his conclusion, really, is that there could be no finding of anticipation unless one met any, rather than each of these eight "tests"."

At p. 363:

"Furthermore, an impractical and inoperable device cannot be an anticipation (Lovell, supra, at p. 47 and Ernest Scragg, supra, at p. 77) and the evidence, here, on a balance of probabilities, is to the effect that the Beacon 3002 was impracticable and inoperable in the vertical position."

At. p. 364:

"A patent is for an idea as distinguished from the thing manufactured. An invention consists of thinking of or conceiving something and suggesting a way of doing it. There may be an idea in the means to carry out an objective as well as in the objective sought. A patentable invention can be the combination in fact of the two `ideas', the conception of the objective and the suggestion of the way of carrying it out."

At p. 364-365:

There need not be an "invention" at both stages (concept and implementation). But there must be invention at either or both stages.

"In addressing the question of obviousness, it will prove useful to first discuss the relationship between the concept of "idea" and that of "invention", for it appeared during the hearing that the word "idea" might have been misused in some occasions.

The word "idea" is sometimes used, as in the expression "there is no invention in an idea", to describe exclusively the objective sought by the inventor. The appellant used the word in that context when it submitted that "what the inventors have contributed, if anything, is an idea, the idea that if a consumer uses a conventional rower which is already well known and available, in the vertical position, he will realize more benefits than he would previously have expected, i.e. more exercises".

In my view, this is an improper use of the word. It is true that there is no patentable invention unless the means to achieve the objective sought have been found, but there may be an "idea" in the means found as there is an "idea" in the objective sought. In that sense, a patentable invention can be the combination in fact of two "ideas", the conception of the objective and the suggestion of the way of carrying out.

This I think, is the proper reading of the reasons given by the members of the Court of Appeal of England in the case of Hickton's Patent Syndicate v. Patents & Machine Improvements Co. (1909), 26 R.P.C. 339:

In my opinion, invention may lie in the idea, and it may lie in the way in which it is carried out, and it may lie in the combination of the two; but if there is invention in the idea plus the way of carrying it out, then it is good subject matter for Letters Patent.

Per Fletcher Moulton L.J. at p. 348 (my emphasis).

... but I think you are losing grasp of the substance and seizing the shadow when you say that the invention is the manufacture as distinguished from the idea. It is much more true to say that the patent is for the idea as distinguished from the thing manufactured. No doubt you cannot patent an idea, which you have simply conceived, and have suggested no way of carrying out, but the invention consists in thinking of or conceiving something and suggesting a way of doing it ... I think you can have a Patent for an idea, which is new and orginal and very meritorious if you suggest a way of carrying it out. If you do not so suggest you cannot no doubt have a Patent but the learned Judge goes on to say: "Unless there is some invention necessary for putting the "idea into practice it is not patentable ... he goes on to deny that there could be a Patent for it because he finds that when once that idea had been suggested there was no difficulty in carrying it into effect. To my mind that is wrong."

Per Buckley L.J. at p. 348 (my emphasis).

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

Per Cozens-Hardy M.R. at p. 347.

The opinion of the Lord Chancellor (Viscount Cave) in Permutit Co. v. Borrowmann, [1926] 4 D.L.R. 285, 43 R.P.C. 356(P.C.), approved in Christiani, supra, at p. 409, per Rinfret J. that:

"It is not enough for a man to say that an idea floated through his brain; he must at least have reduced it to a definite and practical shape before he can be said to have invented a process."

leads to the same conclusion. As Rinfret J. puts it in the Christiani case, supra, at p. 413:

The conception of the idea "coupled with the way of carrying it out" (Hickton's ...) and "reduced to a definite and practical shape" (Permutit ...) constituted the invention of his process..."


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