Case Comment
Société des Usines Chimiques Rhone-Poulenc
v. Jules R. Gilbert Ltd.
citation(s): [1968] S.C.R. 950, 55 C.P.R. 207, at p. 228-234 69 D.L.R. (2d) 353.
Case Comment |
Société des Usines Chimiques Rhone-Poulencv. Jules R. Gilbert Ltd.
citation(s): [1968] S.C.R. 950, 55 C.P.R. 207, at p. 228-234 69 D.L.R. (2d) 353. |
copyright 1997 Donald M. Cameron, Aird & Berlis
"In the present case what is claimed by claim 18 is "a process for the preparation of...therapeutically valuable tertiary diamines" of a class consisting of three particular basic compounds and their salts and it appears to me to follow from the foregoing that the essence of the invention of this process, if there was such an invention, must be the discovery that the three basic compounds of the class referred to and their salts are "therapeutically valuable tertiary diamines".
It also appears to me to follow that to comply with s. 36 (1) the specification should "correctly and fully describe" such utility - in which alone the invention consists - both in respect of what it is and in respect of the manner in which the inventor has contemplated that its advantages are to be secured in practice for if it does not do this it does not describe the invention and its use as contemplated by the inventor.
However, the description need only be sufficient to describe the invention and its use to one who is skilled in the art to which the invention pertains and it thus becomes necessary to consider what was known in the art at the time in order to determine what the words used could reasonably have been expected to convey to such a person. The art or field marked out by the claim is that of therapeutics, that is to say, in the definition of the Shorter Oxford Dictionary, that branch of medicine which is concerned with the remedial treatment of disease. However, there is no suggestion in the patent or elsewhere in the record that there is any field of medicine other than that of histamine in which the substances here in question have any application.
Now what the specification says is that the invention relates to new chemical compounds and to processes of producing them, that more particularly the invention is concerned with new substituted diamines, that it is the main object of the invention to provide new tertiary diamines having exceptionally powerful anti-histaminic action and that it is a further object to provide processes for the production of these new diamines. It then goes on to say that "the new therapeutically active ditertiary diamines of the invention conform to" a general formula, which is then set out and defined, and that substances in this class possess an exceptionally powerful anti-histaminic action. Several of what are referred to as "preferred sub-classes" are next defined after which comes the paragraph:
"Compounds of outstanding merit are:
N-Dimethylaminoethyl-N-benzyl-a-aminopyridine,N-dimethylaminoethyl-N-p-methoxybenzyl-a-aminopyridine, and
2(N-dimethylaminoethyl-N-benzyl)-aminopyrimidine and their salts."
Of the three-named substances as previously mentioned, the first is tripelennamine and the second is neo-antergan.
This is all that the specification says with respect to the utility of the products of the invention. Of it each statement applies to tripelennamine. Only the statement that the new therapeutically active diamines of the present invention conform to the general formula, and the statement that substances in this class possess an exceptionally powerful anti-histaminic action are broad enough to refer to as well to the beta and gamma isomers of the structure known as tripelennamine. Only the last statement, i.e., that "compounds of outstanding merit are:" refers specifically to the salts of tripelennamine. None of the statements refers specifically to any of the salts of the beta or gamma isomers of the tripelennamine structure. Nowhere is there a statement making any assertion of a common property or utility of the substances of the claim 18 class as a distinct class, or as peculiar to that class, and nowhere, save in the statements that "the new therapeutically active ditertiary diamines of the present invention conform to the general formula" and that substances in that class possess exceptionally powerful anti-histaminic action, is there any statement that applied to the whole of the claim 18 class. Even then these statements apply to the whole of that class only if they are read (if indeed they can be so read) as referring to salts, the chemical composition and constitution of which will always be different from that of the general formula because they will always include additional elements.
Is this then a correct and full description of an invention the essence of which - and this is of the invention of the process itself --is the discovery of therapeutic usefulness of the products of the process? In my opinion, it is not. A description of an invention consisting in the discovery of the therapeutic usefulness of a class of substances ought at the least to describe the class and say that the substances of the class are therapeutically useful. What is in the disclosure does not do so. In that respect it is ambiguous. All it says is that the new therapeutically active diamines of the invention conform to a general formula. It does not say that all substances that conform to the general formula are therapeutically active and it does not say which of the substances which "conform to" the general formula are "therapeutically active". Nor is this omission cured by the sentence "substances in this class possess exceptionally powerful anti-histaminic action" for it too is ambiguous and capable of meaning that all or only some members of the class which conform to the general formula are being referred to. Even if the latter sentence is read as referring to all substances which conform to the general formula, it does not say that all such substances are "therapeutically active" for it merely says that they have exceptionally powerful anti-histaminic effect and it is clear that substances may have such effect and yet be therapeutically useless. These comments apply as well when the statements are read with relation to the general formula and class of claim 18. Moreover, the statements are even less suitable to "correctly and fully describe" a class of therapeutically active diamines which includes the salts of the three basic substances which conform to the general formula of claim 18 for the salts are not even mentioned and it is only by a forced interpretation of the expression "conform to" as including not only structures which have a chemical composition and constitution falling within the definition of the general formula but other structures, as well, which besides having a chemical composition and constitution corresponding to the general formula embrace other components, that they can be considered as being so much as referred to in the statements. The statements are thus not clear and the reader in my opinion is being left to wonder or guess at what is meant by them. Nor is there anything further in the disclosure which serves to clarify them or to provide a definition of what substances are alleged to be therapeutically active. There is, therefore, in my opinion, no correct or full description of the class of substances alleged to be therapeutically active and consequently no correct or full description of the processes alleged to produce therapeutically active diamines.
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