Case Comment

Lawson v. Commissioner of Patents

 

citation(s): (1970), 62 C.P.R. 101 (Ex. Ct. per Cattanach J.)

copyright 1997 Donald M. Cameron, Aird & Berlis

Contents

Summary

Facts

The Decision

At p. 111.

"The narrow issue is whether the word "art" in the definition includes a means of describing the boundaries of a plot of land and whether a piece of land subdivided into lots, the boundaries of which are delineated by curved lines in the shape of a champagne glass constitutes an "art" or "manufacture" within the meaning of that word as included in s. 2(d).

An art or operation is an act or series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or of condition. It is abstract in that, it is capable of contemplation of the mind. It is concrete in that it consists in the application of physical agents to physical objects and is then apparent to the senses in connection with some tangible object or instrument.

In the earlier development of patent law, it was considered that an invention must be a vendible substance and that unless a new mode of operation created a new substance the invention was not entitled to a patent, but if a new operation created a new substance the patentable invention was the substance and not the operation by which it was produced. This was the confusion of the idea of the end with that of means. However, it is now accepted that if the invention is the means and not the end, the inventor is entitled to a patent on the means.

As I understood the submissions of counsel for the appellant, it was that the patent applied for was the manner of subdividing land in accordance with the enunciated "champagne glass" principle and that he conceded that what was claimed was not actually the parcel of land so subdivided and acknowledged that a claim to the land itself, subdivided in that manner was untenable.

Again as I understood his argument, it was directed to rebutting the proposition put forward by Morton, J., in Re G.E.C.'s Application (1942), 60 R.P.C. 1, that "a method or process is a manner of manufacture if it (a) results in the production of some vendible product ...". I understood his submission to be that the land so marked out was a vendible product.

In Refrigerating Equipment Ltd. v. Drummond & Waltham System Inc., [1930] 4 D.L.R. 926, [1930] Ex. C.R. 154, Maclean, J. said at p. 937:

"The Patent Act recognizes a method or process as having the same title to protection as a machine or article of manufacture; I conceive method and process to be one and the same thing, but in any event that "art" may include a method or process patent is well settled."

On the assumption that what is being applied for is a patent for a method and that "method" is synonymous with "art", I turn to a consideration of whether the alleged invention is an art within the meaning of that word as contained in s. 2(d).

In National Research Development Corporation's Application (Australia), [1961] R.P.C. 135, Dixon, C.J. said at p. 145:

"The point is that a process, to fall within the limits of patentability which the context of the Statutes of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art (see Virginia-Carolina Chemical Corporation's Application, [1958] R.P.C. 35 at p. 36) - that its value to the country is in the field of economic endeavour. (The exclusion of methods of surgery and other processes for treating the human body may well lie outside the concept of invention because the whole subject is conceived as essentially non-economic: see Maeder v. Busch (1938), 59 C.L.R. 684 at p. 706.)"

It is obvious from the concluding portion of the above quotation that professional skills are not the subject-matter of a patent. If a surgeon were to devise a method of performing a certain type of operation he cannot obtain an exclusive property or privilege therein. Neither can a barrister who has devised a particular method of cross-examination or advocacy obtain a monopoly thereof so as to require imitators or followers of his methods to obtain a licence from him.

It seems to me that a method of describing and laying out parcels of land in a plan of subdivision of a greater tract of land in the skill of a solicitor and conveyancer and that of a planning consultant and surveyor. It is an art which belongs to the professional field and is not a manual art or skill.

I, therefore, conclude that the method devised by the applicant herein for subdividing land is not an art within the meaning of that word in s. 2(d).

While the definition of an invention in the statutes of England, Australia and New Zealand embody the words "any manner of new manufacture" whereas the words in s. 2(d) of the Patent Act are "art, process, machine, manufacture or composition of matter", the words "manner of manufacture" are merely a compendious way of expressing the same ideas contained in the words "art, process, machine, manufacture or composition of matter."

Therefore, it is accepted in principle that the requirements with regard to subject-matter of a patent are co-extensive under the British and Canadian statutes and that the jurisprudence established by the Courts of the United Kingdom is authoritative in Canada.

"Manufacture" connotes the making of something. Thus it is seldom that there can be a process of manufacture unless there is a vendible product of the process. It must accomplish some change in the character or condition of material objects.

Endnotes

Return to:

Cameron's IT Law: Home Page; Index

Cameron's Canadian Patent & Trade Secrets Law: Home Page; Index

JurisDiction Home Page