X v. Commissioner of Patents
citation(s): (1981), 59 C.P.R. (2d) 7 (F.C.A. per Thurlow C.J.)
copyright 1997 Donald M. Cameron
The inventor, Mr. X, applied for a patent for a "Death Ray".
Four of the claims were for "an instrument combining the instruments of a high-potential, magnifying transmitter and a suitable source of photo-ionizing radiations", three were for "a munition in the form of a ray of electrical and electromagnetic wave forms" and three were for "an improvement in the methods of transmitting electrical energy to a distance through the natural media without wires".
The specification included two pages of diagrams illustrating the machine.
At p. 8:
"This is an appeal under s. 44 [am. 1970, c. 10 (2nd Supp.), s. 65] of the Patent Act, R.S.C. 1970, c. P-4, from a decision of the Commissioner of Patents which approved the recommendation of the Patent Appeal Board and refused the appellant's application, serial No. 213,113, for a patent for an alleged invention entitled "Death Ray".
The specification, much of which is not readily comprehensible to one not skilled in the art, covers some 43 pages and concludes with 10 claims...
At p. 9-10:
It is common ground that neither the appellant nor anyone had constructed a device of the kind described. To construct it would require a large investment, which the appellant cannot afford and which no one has undertaken to make. That such a device, if constructed, would produce the results claimed or could be made to produce such results is thus, even though founded on known scientific principles, mere prediction. It is obvious that on this point the opinions of the appellant and those of the Commissioner and his advisers differ, the latter being satisfied that the device, as described, would not work. Thus, in the course of its reasons, after dealing with and upholding the examiner's objections that the specification did not clearly describe how the voltage can overcome deficiencies of the laser and extend the length of a discharge path beyond the ionization produced by the laser and was not framed in sufficiently clear language to enable a person skilled in the art to "make , construct, compound or use the invention", the Board went on to discuss operability and said:
"The test of utility of an alleged invention depends on whether by following the directions of the specification, the effects which the patentee professed to produce can be, in fact produced. In this application we are satisfied that which is described lacks utility because it is inoperable for the purpose for which it was designed. Section 2 and 36 of the Patent Act have not been satisfied."
In my opinion, the nature of the objections as to the form and clarity of the specification is such that they might have been overcome by amendment if, indeed, the appellant had made and disclosed an invention. But the conclusion reached by the board and adopted by the Commissioner that the device described "is inoperable for the purpose for which it was designed" is one of fact, a finding from which it follows that there was no invention, within the meaning of s. 2 of the Act, disclosed by the specification.
At p. 10:
On the material in the record, consisting of the specification and the communication between the appellant and the Patent Office, and in the absence of evidence on the point, it does not appear to me that the Court is in any position to form an opinion that differs from that of the Board as to whether or not a device of the kind described in the specification could be constructed and made to work. Even if the Court were inclined to take a view differing from that of the Commissioner and his advisers, the Court would be bound to accord appropriate respect for their finding on the same material, having regard to the technical expertise such officials are presumed to have and exercise. For my part, I can find no basis for differing with the Board's finding on the point. In this situation there is, in my opinion, no basis on which the Court can properly interfere with the finding of the Board on the point or with the Commissioner's action in adopting it. It appears to me, moreover, that in the face of this finding the present appeal cannot succeed.
At p. 10-11:
The only point of law raised by the appellant at the hearing of the appeal was that the examiner had improperly required that he produce a "working model" of his device rather than a model as provided for in s. 40 of the Patent Act and that the examiner's error had been carried into and became a basis of the Board's decision.
In its reasons, after expressing its finding of inoperability, the Board said:
We note that the applicant failed to provide a working model required by the examiner under the authority of Section 40 of the Patent Act. It has been explained by the applicant that he can see no means by which his "invention can be made of convenient size at this time." Further, we observe, as indicated in the applicant's response, that the Department of National Defense also requested a working model of the applicant's device so that the technical staff could "examine it." This suggests that what the applicant has developed may well be an abstract theorem, for which no patent may issue by virtue of Section 28(3) of the Patent Act.
In my view these observations are purely obiter. They do not purport to deny a patent for failure to produce a working model and they do not even go so far as to hold that what the appellant had developed was only an abstract theorem. I do not think, therefore, that the Board's recommendation or the Commissioner's approval of it can be regarded as based on them.
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