Case Comment
© 1997-2004 Donald M. Cameron,
Ogilvy Renaultcitation(s): [1967] 2 Ex. C.R. 279 (per Noël J.)
Case Comment
© 1997-2004 Donald M. Cameron,
Ogilvy Renault
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At p. 282
At p. 284
At p. 285
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At pp. 291-292
“It was sometime in the spring of 1951 when Anderson, the patentee in suit, was operating a filling station (as a lessee of Texaco Oil Company) and a garage in Vancouver, B.C., that an unidentified customer (whom the patentee saw twice and has not seen since) came to his shop with a defective generator and asked him to check it for him. Anderson states that there was masking tape covering two of the openings of the generator on the side closest to the filter cap. The generator had overheated and burnt out. He installed a new armature and brushes and then charged the battery and repaired it. Anderson states that this customer was very perturbed about his generator and told him that he had had this same generator repaired three months prior thereto and had been having periodic trouble with it. He then asked him whether he would not try to do something to stop it. Anderson then took a piece of stove-pipe he had in the garage, wrapped it around the generator, wired the back end, cut out a portion for the terminals and used a tool to flare out the front portion which overlapped so that it would cover the openings without, however, restricting the entry of air. This was a very makeshift installation.
Anderson then states that he charged this customer for the generator repair (between $18 and $20) but did not charge him for the stove pipe. He then added that he asked him "if it did improve anything to let him know".”
At pp. 292-293
“Anderson explained that this customer was not a regular customer and he did not ask his name nor write down his licence number. Nor did he caution him to keep the device confidential, and this appears from his answers at p. 232 of the transcript:
Q. Did you ask him to keep this device that you fitted to his car, secret or confidential?
A. No, Sir.
Q. You didn't caution him not to show it to nobody else?
A. No.
Q. You didn't ask him to bring it over to you for service in the future until you found out whether it worked or not?
A. No, at this particular time, I didn't know whether it would work or not. I placed it on there in the hope it would help him.and at p. 236 of the transcript :
Q. In any event you put it on for the purpose of helping this problem of contaminated air entering the generator apertures?
A. I put it on there hoping it would help the situation.
Q. And for that reason only. And as it turned out it did do the job?
A. Yes, Sir.
Q. But you didn't find this out until a year later?
A. That is correct.This same customer returned to Anderson's garage in the spring of 1952 when one of the attendants told Anderson a customer wanted him and would not allow anyone else to service him. Anderson states at p. 204 of the transcript:
A. ... I went out and served him. And when I checked the oil I saw this piece of stove pipe. And he got quite a kick out of my surprise, because over the period of time I hadn't expected him back. He told me I could take anything off his car but that. He had no trouble during the time he was away.
As a matter of fact, when the customer came back, it appears from Anderson's evidence that nothing had to be done to the unit on the generator at the time as it had functioned well since the spring of the preceding year and this appears at p. 238 of the transcript:
Q. When the unit came back in 1952, when you saw it again for the second time, did the customer indicate he had to do something to it in the meantime?
A. No, it was a pretty rigid piece of metal. The stove pipe isn't flimsy. I wired it on. The generator was stationary and so was the piece of metal.”
At pp. 294-295
It is against the above background that counsel for the defendant maintains that Anderson has placed the invention in public use more than two years prior to the date of 1967 his application for a patent in Canada, (i.e. April 23. 1954) contrary to section 28(1) (c) of the Patent Act…
At pp. 295-296
In Conway v. The Ottawa Electric Railway Company this Court (Burbidge J.) held that:
The use of an invention by the inventor or by other persons under his direction, by way of experiment, and in order, to bring the invention to perfection is not such a public use as, under the statute, defeats his right to a patent. But such use of the invention must be experimental, and what is done in that way must be reasonable and necessary, and done in good faith for the purpose of perfecting the device or testing the merits of the invention; otherwise, the use in public of the device or invention for a time longer than the statute prescribes will be a dedication of it to the public; and when that happens, the inventor cannot recall the gift."
At p. 296:
In Boyce v. Morris Motors Ltd. Astbury J. stated:
It is a question of fact in each case whether a prior use alleged has been proved to have been complete. An incomplete experimental use which led only to partial success, even in the subsequent patentee's field would not amount to a disclosure of the subsequent perfected invention.
In Westley v. Tolley, Sons and Bostock and the same v. W. H. Richards & Co. Charles J. had this to say on the question of experimental use:
...it is perfectly true supposing the Defendants had applied for a patent for this invention, which they undoubtedly use in their factory, they might have been met by one of you saying, "You cannot apply for a patent, you have given this thing"-I will not use the word dedicated -"but you have given this thing to the public years and years ago, and anybody who went into your factory at Darlaston might, if he had taken the trouble to look about him, have seen that this thing was being used". It may be that that would be an answer, and that the Crown would say: "Very well, you shall not have a patent at all because there has been a public use of this invention already". Equally is it true that the Defendants might answer, "True it is we have been using it, but we have only been using it to try whether it is a good thing or not", and if that were the opinion of the authorities, then the Defendants would get their patent, even although they had used it in their own factory.
Fletcher Moulton on Patents at p. 68 suggests as good law:
...that a prior user in order to defeat a patent must have been a user as a manufacturer and not a mere fortuitous user of the subsequent invention in which the person using it gained no knowledge of the advantages of the invention and which would not have led to its further use.
In In re Stahlwerk Becker Aktiengesellschaft the House of Lords, through Lord Finlay L.C., at p. 19 dealt with the matter of prior user as follows:
...The law as to prior user seems to be this, that, if the article has been manufactured and sold, that gives the means of knowledge to the purchaser, and that that is enough to establish prior user.
And lower down on the same page he added:
When an article is manufactured and sold, and from an inspection of it it is possible for the vendee to ascertain its component elements, or the main principles of its construction, then, in my opinion, there has been publication by prior user.
At p. 297:
The principle applied as to what is public use by the inventor such as here, as distinct from use by another inventor or person, was clearly enunciated by Pollock B. in Croysdale v. Fisher as follows:
...When it is said that a process has been disclosed or an invention has been disclosed by means of user. it is not necessary that such user should be a user by the public proper, provided only there is a user in public, that is to say, in such a way as contra-distinguished from a mere experimental user with a view of patenting a thing which may or may not be existing.
In Elias v. Grovesend Tinplate Co. the Master of the Rolls elaborated on the principle of experimental use as follows:
...that so long as you are experimenting upon the thing in the hands of people who ought not to disclose it-you must have people to assist you, and you cannot do everything yourself in your own private room -but so long as you are only doing it with people who are to assist you, and who ought not to tell, that is experimenting, and it is no publication; it does not make it public property. But if you go on with all that you have been in doubt about, to erect or make your patent-if it is a machine, to make your machine-if all that is over, and you put it up in a public workshop or in a place where other people would come who are not bound by any rule of secrecy or faith-who are not bound to keep the secret-if you put it up in a place which they are to frequent and where they can see it, you have published it, and if you have published it, it becomes public property-it becomes the property of all the world immediately. If you put it up in a public workshop-not to go on experimenting about it in the sense in which I have said, to see whether your machine is complete or not-but to use it as the completed thing, as here, (for that is the way in which it was put up) in his factory as part of his plant, and in respect of the user of which it is obvious, if it turned out a failure, he would have to pay for the plates-then it is commercial user as well. If that is done it is no longer experimental; it is a publication.
I would indeed think that a common sense view should be taken in dealing with the means taken by an inventor to complete and perfect his invention and thereby ensure that a half baked device is not patented and providing he is experimenting, the means employed should not be too important.
At p. 297-298:
Indeed, the small man, in my view, is entitled to an invention as well as the large corporation and whether he is or not a dedicated or professional inventor, he should still be entitled to what he invents. He will not have all the advantages of a laboratory or a testing ground and the assistance of a large staff but that should not place him in a position different from those who have such advantages and he should be able to use whatever means of testing are available to him even if such means are, as here, a customer and his automobile, providing always, however, that what he is doing is experimenting.
At p. 298:
Reverting, however, to the facts disclosed in the present case, it is most difficult, under the circumstances involved here, to find that the patentee was merely experimenting when he placed his stove-pipe shield on the customer's generator even if it was a makeshift contraption and, in any event, it is not possible to hold that such was the case after this customer's return in the beginning of April 1952 (which was still, even then, more than two years prior to his application for the patent in suit) when he was so happy with the stove-pipe shield he had been using for a year that he told Anderson he could take anything else off but that he should leave the shield on and which, of course, he did.
Experimentation here is further denied by the placing of the shield on this unknown man's generator without any restriction on his use of it or without any injunction for secrecy and in the absence of the customer, whom Anderson could not identify and who, therefore, could not be questioned as to how many people saw the invention, and also because of the public manner in which the device was used, I am irresistibly led to the inference that it is most likely that other people saw it or heard of it. Quite apart, however, from the number of people that may have seen the patentee's device, the authorities clearly establish that it is sufficient that one person alone sees the invention (cf. Carpenter v. Smith) to make it known in a public manner, which is the test (and not use by the public) if, on the other hand, the plaintiff was not able to establish that what he was doing was experimenting.
At pp. 298-299:
It was again held that one use alone is sufficient to establish public use in Taylor's Patent case which dealt with a grate in a fireplace, although there was no sale and only one prior use and it was in a private house. In this connection Romer J. expressed himself as follows:
There is one point which, in my opinion, is fatal to this patent, and certainly the Specification as at present drawn, and that is this-the very thing that the Patentee claimed as his invention was in use in Mr. Bowes’ hall for several months prior to the date of the Respondent's patent... This grate in the hall, which, as I have said, is, for all practical purposes, the Patentee's, was originally put up and used only by way of experiment, and used by way of experiment up to November 1893. After that time the necessity of keeping it in any way secret and only using it experimentally ceased so far as Mr. Bowes was concerned, but for several months, from November 1893 down to the 2nd of April 1894, the date of the Respondent's patent, this grate of Mr. Bowes was publicly used-used in his house, openly, seen by a hundred visitors at least, explained to them, and in no way kept secret....It was an open user, and for the purposes which I am now considering a public user.
At p. 299:
In Stahlwerk Becker Aktiengesellschaft the House of Lords decided that if an invention were available to even one member of the public, that was sufficient. Indeed, Lord Finlay stated at p. 19:
I think it would be very dangerous to introduce the doctrine which your Lordships are now invited to introduce, either that it must be actually shown that the knowledge had been acquired by some individual, or that there is a high probability that it had in fact been acquired. The law as to prior user seems to be this, that, if the article has been manufactured and sold, that gives the means of knowledge to the purchaser, and that that is enough to establish prior user.
And lower down he added:
When an article is manufactured and sold, and from an inspection of it it is possible for the vendee to ascertain its component elements, or the main principles of its construction, then, in my opinion, there has been publication by prior user.
In the present case, as soon as the unidentified customer drove out without any injunction or restriction placed upon him, it then became available to anyone who wanted to lift up the hood and look at it.
In Birtwhistle v. Sumner Engineering Co. Ld. one unit only of a timing device for bookmakers was not even sold but merely carried around by a bookmaker when he went on his rounds for the purpose of trying it out and yet this was held to be prior public use.
As a public use has been established here, it was, I believe, incumbent upon the plaintiffs to bring themselves within the exception and establish that such use was experimental only and nothing else. Anyone who claims he is exempted from the provisions of the statute by reason of experiment must, I should think, establish clearly that it is an experiment. The plaintiffs have not, in my view, succeeded in establishing an experimental use here.
At p. 300:
The fact that Anderson said to the unknown customer, "I hope this will help you" is, in my view, a long way from establishing that the placing of the makeshift device on his automobile was experimental. It merely establishes that there was some doubt in his mind as to whether the device would be successful or not and nothing else. There is also no question that it was placed there for the purpose of solving the problem the man had had with his generator and it did, in fact, exactly that. I should also add that had Anderson really been an experimenter, he would have tried it on other cars, yet he did not do it, nor did he, according to the evidence, at any time think of doing it.
Furthermore, the evidence of Anderson on this matter is not too satisfactory in that on discovery in October 1963, he merely stated that he had told the customer "I hope this will help you" and it was only at the trial that he stated he had said to the customer ". . . if it did any good, I told him to come back and see me". This is not, in my view, sufficiently cogent and convincing evidence on which to establish an experimental use.
How indeed can it be held that this was experimental when Anderson failed to take even the most elementary precautions to guarantee or ensure the placing of the device on the customer's car as experimental?
In any event, whatever was in Anderson's mind, if this was experimental, it was not experimental in the mind of the unidentified customer as he was under no restriction or injunction to secrecy when he first came to the patentee in 1951, nor was he under any such restriction when he came back and left at the end of March or beginning of April 1952, which was still more than two years prior to Anderson's application for his patent which was filed on April 23, 1954.
It therefore follows that even if it could be said that whatever took place in 1951 prior to the customer's return in the spring of 1952 was experimental, it definitely ceased to be experimental when he came back and said "I used it for a year and it worked fine". At that time there was no further experiment involved.
At pp. 300-301:
The patentee did go through the process of first causing aluminum units to be made which were not satisfactory. They were unsatisfactory, however, not because Anderson had not perfected his device at this stage, and was experimenting, but merely because there was some difficulty in that they did not fit the generator properly and stay in place and he was also afraid that they would come into contact with the terminals. He had no such trouble with the stove-pipe contrivance which was also made out of metal and which remained as a permanent fixture and a satisfactory solution to the customer's generator problem.
Under the above circumstances, it is not possible to hold that the use here was experimental and it therefore follows that the device described and claimed in the patent in suit was in public use in Canada for more than two years prior to the application in Canada for the said letters patent.”
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