Case Comment
© 2007 Donald M. Cameroncitation(s): [1959] S.C.R. 378 (per Martland J.) at 383
Case Comment
© 2007 Donald M. Cameron
The use of an old method to known materials which produces and new and useful compound is patentable.
Ciba's patent application related to a process of producing disinfecting and preserving preparations, consisting of special chemical compounds, and to the compounds so produced.
The appellant and the respondent agreed to the following facts:
1. The products claimed are patentable since they are useful as disinfectants and preservatives and the persons named as inventors in the application were the first to produce them or suggest their production and to discover their utility which was not previously obvious.
2. The process claimed is one for the production of the products claimed .
3. As of the date when the process claimed was first carried out by the persons named as inventors in the application, the reaction between reactants of the general type specified in the process claims was a known and classical type of general reaction, though it had never been applied to the particular reactants specified in these claims which reactants were, however, known chemical compounds.
4. Had a person skilled in the art desired, at the date referred to in paragraph 3, to produce the products claimed he would have known that the process claimed could be utilized for that purpose.
The issue in the appeal was as to whether, on these agreed facts, the process claims 1 to 3 are inventions as defined in the Patent Act, R.S.C. 1952, c. 203. It was agreed that the products referred to in claims 4 to 6 are patentable.
... To constitute an invention within the definition in our Act the process must be new and useful. There is no question as to the process here being useful, as it produces compounds which have been admitted to be both new and useful.
Is it a new process? Is the element of novelty precluded because it consists of a standard, classical reaction used to react known compounds? In my opinion the process in question here is novel because the conception of reacting those particular compounds to achieve a useful product was new. A process implies the application of a method to a material or materials. The method may be known and the materials may be known, but the idea of making the application of the one to the other to produce a new and useful compound may be new, and in this case I think it was.
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