Shell Oil Co v Canada (Commissioner of Patents)

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Shell Oil Co v Canada (Commissioner of Patents)

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Hearing: March 30 and 31, 1982
Judgment: November 2, 1982
Citations [1982] 2 S.C.R. 536
Prior history none
Ruling Appeal Allowed
Court Membership
Chief Justice: Bora Laskin
Puisne Justices: Roland Ritchie, Brian Dickson, Jean Beetz, Willard Estey, William McIntyre, Julien Chouinard, Antonio Lamer, Bertha Wilson
Reasons given
Unanimous reasons by Wilson J.
Laskin C.J., Estey J., Chouinard J. and Lamer J. took no part in the consideration or decision of the case.

Shell Oil Co v Canada (Commissioner of Patents), [1982] 2 S.C.R. 536, is a landmark decision by the Supreme Court of Canada in the area of Canadian patent law. Prior to this decision, there was no general principle of patent law, and no direct authority, for the proposition that a new use of an old compound can be claimed as a patentable invention. Furthermore, the decision is a leading case on the test for patentable "art".

Supreme Court of Canada highest court of Canada

The Supreme Court of Canada is the highest court of Canada, the final court of appeals in the Canadian justice system. The court grants permission to between 40 and 75 litigants each year to appeal decisions rendered by provincial, territorial and federal appellate courts. Its decisions are the ultimate expression and application of Canadian law and binding upon all lower courts of Canada, except to the extent that they are overridden or otherwise made ineffective by an Act of Parliament or the Act of a provincial legislative assembly pursuant to section 33 of the Canadian Charter of Rights and Freedoms.

Contents

Background

Shell Oil discovered that compounds having a specific chemical structure have useful properties in respect of the regulation of the growth of plants. Some of the chemical compositions it identified were new, while others were old.

Shell Oil initially sought a patent on the chemical compositions themselves, but later it withdrew its claims for those. It instead sought to claim the chemical compositions in terms of their utility.

In its submissions to the Supreme Court, Shell Oil took the position that the invention was not in the substances themselves, but in the discovery of a new use for these known chemical compositions, namely as plant growth regulators. The issue before the Court was whether such a discovery is a patentable invention.

Reasons of the Court

The definition of “invention” in section 2 of the Patent Act includes "any new and useful art". In determining whether Shell Oil's discovery is a patentable "art", Justice Wilson, for the Court, stated:

The Patent Act is Canadian federal legislation and is one of the main pieces of Canadian legislation governing patent law in Canada. It sets out the criteria for patentability, what can and cannot be patented in Canada, the process for obtaining a Canadian patent, and provides for the enforcement of Canadian patent rights.

What then is the “invention” under s. 2? I believe it is the application of this new knowledge to effect a desired result which has an undisputed commercial value and that it falls within the words “any new and useful art”. I think the word “art” in the context of the definition must be given its general connotation of “learning” or “knowledge” as commonly used in expressions such as “the state of the art” or “the prior art”. [Shell Oil]’s discovery in this case has added to the cumulative wisdom on the subject of these compounds by a recognition of their hitherto unrecognized properties and it has established the method whereby these properties may be realized through practical application. In my view, this constitutes a “new and useful art” and the compositions are the practical embodiment of the new knowledge.

After defining the term “art” broadly as requiring the practical application of new knowledge to effect a desired result which has an undisputed commercial value, the Court concluded that the discovery of a new use of an old compound, in this case the newly discovered means of regulating the growth of plants, is accordingly a “new and useful art”. Consequently, the Court referred the matter back to the Commissioner of Patents for the issue of a patent.

Definition of "art"

In view of the above, the definition of the term "art" as articulated by Justice Wilson for the Supreme Court is generally cited as including a process that: [1]

  1. is not a disembodied idea but has a method of practical application;
  2. is a new and innovative method of applying skill or knowledge; and
  3. has a result or effect that is commercially useful.

See also

In Canadian patent law, only “inventions” are patentable. Under the Patent Act, only certain categories of things may be considered and defined as inventions. Therefore, if a patent discloses an item that fulfills the requirements of novelty, non-obviousness and utility, it may nonetheless be found invalid on the grounds that it does not fall within one of the statutory categories of “invention”. Since the Patent Act, the categories of patentable subject matter have been defined and interpreted by Canadian courts.

For a patent to be valid in Canada, the invention claimed therein needs to be new and inventive. In patent law, these requirements are known as novelty and non-obviousness. A patent cannot in theory be granted for an invention without meeting these basic requirements or at least, if a patent which does not meet these requirements is granted, it cannot later be maintained. These requirements are borne out of a combination of statute and case law.

Trial

Patents

Related Research Articles

In United States patent law, utility is a patentability requirement. As provided by 35 U.S.C. § 101, an invention is "useful" if it provides some identifiable benefit and is capable of use. The majority of inventions are usually not challenged as lacking utility, but the doctrine prevents the patenting of fantastic or hypothetical devices such as perpetual motion machines.

The inventive step and non-obviousness reflect a general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. In other words, "[the] nonobviousness principle asks whether the invention is an adequate distance beyond or above the state of the art".

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<i>National Research Development Corporation v Commissioner of Patents</i> Australian patent law case

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In Canadian patent law, inventions must be useful, in addition to novel and non-obvious, in order to be patented.

<i>Apotex Inc v Sanofi-Synthelabo Canada Inc</i>

Apotex Inc v Sanofi-Synthelabo Canada Inc, [2008] 3 S.C.R. 265, is a leading Supreme Court of Canada decision on the novelty and non-obviousness requirements for a patent in Canada. The Court rejected a challenge by the generic drug manufacturer Apotex to declare Synthelabo Canada's patent for Plavix, an anti-coagulant drug, invalid. At issue was whether selection patents are invalid in principle, and if they are not, whether the subject selection patent was invalid on the grounds of anticipation, obviousness or double patenting.

<i>Tennessee Eastman Co v Canada (Commissioner of Patents)</i>

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Brenner v. Manson, 383 U.S. 519 (1966), was a decision of the United States Supreme Court in which the Court held that a novel process for making a known steroid did not satisfy the utility requirement because the patent applicants did not show that the steroid served any practical function. The Court ruled that "a process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute." Practical or specific utility, so that a "specific benefit exists in currently available form" is thus the requirement for a claimed invention to qualify for a patent.

Schlumberger Canada Ltd v Canada is a decision of the Federal Court of Appeal concerning the patentability of software inventions within the context of the Patent Act (Canada). At issue was the patentability of a method of combining and analyzing borehole measurements for oil and gas exploration using a computer programmed according to mathematical formulas. The Federal Court of Appeal held that the use of a computer "does not change the nature" of the discovered invention and that the process at issue was a "mere scientific principle or abstract theorem" and therefore not an "invention" within the meaning of the Patent Act.

Amazon.com Inc v Canada is a decision of the Federal Court of Appeal concerning the patentability of business methods within the context of the Patent Act. At issue was the patentability of a method that allowed customers shopping online to make purchases with one-click buying.

Neither computers nor software are specifically mentioned in the Canadian Patent Act. Canadian courts have held that the use of a computer in an invention neither lends, nor reduces patentability. Therefore, that an invention involves a computer is not determinative of patentability; instead, whether a computer-using invention is patentable turns on whether that invention meets the general requirements for patentability as would apply to any invention.

References

  1. ↑ Progressive Games, Inc. v. Canada (Commissioner of Patents), [1999] F.C.J. No. 1623, 3 C.P.R. (4th) 517, 1999 CanLII 8921 (F.C.T.D.) at para. 16, aff’d (2000), 9 C.P.R. (4th) 479, 2000 CanLII 16577 (F.C.A.)
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