Canadian Patent Scaffolding Co. Ltd. v. Delzotto Enterprises Ltd. et al.
(1978) 42 C.P.R. (2d) 7, Federal Court, Trial Division, per Addy J.
aff'd (1980) 47 C.P.R. (2d) 77
The principle is established at law that, if there has been sale or use in public, it is not necessary to prove that any particular member of the public has acquired actual knowledge of the invention or what the details of his knowledge are.
However, if there is user in public, such user does not fall within the purview of the statute if it is carried out principally and mainly for the purpose of bona fide experimentation. Such experimentation must be reasonable and necessary but may be carried out with a view to either perfecting the invention as such or testing its merits or practical utility. The fact that, in the course of such experimentation, a profit or gain is realized or a benefit is derived by the inventor or by another person does not ipso facto disqualify the use from being considered experimental providing the main purpose remains experimentation throughout. From the moment the use in public ceases to be principally and fundamentally for experimental purposes or the experimentation ceases to be reasonable and necessary, then, from that moment, it becomes a public use as contemplated by the statute.
Once a party attacking the patent has established that the invention has in fact been used in public before the two-year period immediately preceding the date of application, it is then up to the party relying on the patent to establish clearly that any user in public, which occurred earlier than two years before the date of application, was for bona fide experimentation purposes as above defined. This latter statement, of course, is but another application of the rule that a person seeking exemption from a general statutory provision must clearly establish that he is entitled to the benefit of that exemption: see Gibney et al. (carrying on business as Progen Distributors) v. Ford Motor Co. of Canada Ltd. (1967) 52 C.P.R. 140 at p. 158, [1967] 2 Ex. C.R. 279, 35 Fox Pat C. 143; Conway v. Ottawa Electric Railway Co. (1904), 8 Ex. C.R. 432 at p. 442; The Custodian v. Propellor Woodworking Co. (1947), 6 C.P.R. 37 at p. 42, [1947] Ex. C.R. 96, 6 Fox Pat. C. 14 at p. 19; Re Newall and Elliot et al. (1858), 4 C.B. (N.S.) 269, 140 E.R. 1087 at p. 1097; Sauquoit Fibres Co. v. Leesona Corp. (1974), 23 C.P.R. (2d) 178 at p. 190.
Whether there was public use or sale or whether there was experimentation in any particular case entirely depends, of course, on the ultimate findings of fact arising from the evidence.
(7) True nature of experiments
Having regard to my findings with reference to the security precautions taken, to the extent, conduct and recording of the tests, and to the remuneration and benefits received therefrom, I am not, in the circumstances, prepared to hold that the tests were either reasonable or were necessary to the extent that they were conducted or even that they constituted bona fide experimentation. I am convinced that either no experimentation was conducted as alleged or, at the very least, that the principal purpose of the use in all four cases was not experimentation.
The evidence of the witness Avery and other witnesses of the defendants, who stated that the main interest was experimentation throughout was not borne out by the facts and I do not accept it.
If there was any purpose or objective in the carrying out of the projects in issue, other than the obvious and normal one of conducting for profit the trade or business of concrete forming, it was to convince others of the practical utility and merits of the invention and not to convince the inventor himself. Only in the latter case is there a question of true experimentation. The other objectives involve questions of marketing, financing or public relations. None of these purposes, however, would exempt the public use from the provisions of the statute.
(8) Finding
On this issue I therefore find that, not only have the defendants failed to establish that these uses were experimental, but that, on a balance of probabilities, the contrary has been positively established, namely, that the uses were public uses within the meaning of the statue. Since these uses occurred in August, 1971, and the application was filed in January, 1974, the patent is declared invalid and the beams, as described therein, are available for public use in Canada.