Pioneer Hi‑Bred Ltd. v. Canada (Commissioner of Patents), [1989] 1 S.C.R. 1623
Pioneer Hi‑Bred Limited Appellant
v.
Commissioner of Patents Respondent
indexed as: pioneer hi‑bred ltd. v. canada (commissioner of patents)
File No.: 20388.
1988: May 26; 1989: June 22.
Present: Dickson C.J. and Beetz*, McIntyre, Lamer, Le Dain*, La Forest and L'Heureux‑Dubé JJ.
on appeal from the federal court of appeal
Patents -- New soybean variety developed by artificial cross-breeding but cultivated by natural means -- Description of the new variety insufficient -- Patent application denied -- Patent Act, R.S.C. 1970, c. P‑4, s. 36(1).
Patents -- Appeal to Federal Court -- Patent application denied -- Powers of Federal Court of Appeal -- Whether Federal Court of Appeal may consider aspects of patent application not commented upon by Commissioner of Patents -- Patent Act, R.S.C. 1970, c. P‑4, s. 44 -- Federal Court Act, R.S.C. 1970 (2nd Supp.), c. 10, s. 52(c).
An application was filed to obtain a patent for a new soybean variety developed from artificial cross-breeding but cultivated naturally. The Patent Office Examiner rejected the application and his decision was affirmed by the Commissioner of Patents and by the Federal Court of Appeal. This appeal raises two issues: (1) does the specification submitted in support of the application meet the requirements of s. 36(1) of the Patent Act, and (2) does a new variety of soybean developed from artificial cross‑breeding constitute an invention within the meaning of s. 2 of the Patent Act.
Held: The appeal should be dismissed.
Section 44 of the Patent Act gives the Federal Court of Appeal exclusive jurisdiction to hear and determine an appeal once the Commissioner has made an objection or refusal in respect of a patent application. Section 44, read with s. 52(c) of the Federal Court Act, enables the Federal Court of Appeal to consider aspects of the application on which the Commissioner of Patents made no comment. The power contemplated by s. 44 enables the Federal Court of Appeal not only to determine whether the Commissioner's conclusions are correct in law but also to arrive at its own conclusions on the evidence presented.
The description of the new soybean variety submitted by the appellant in its specification was not sufficient and its application must be dismissed. According to s. 36(1) of the Patent Act, the applicant must disclose everything that is essential for the invention to function properly. To be complete, it must meet two conditions: (1) it must describe the invention and define the way it is produced or built; and (2) the applicant must define the nature of the invention and describe how it is put into operation. A failure to meet the first condition would invalidate the application for ambiguity, while a failure to meet the second would invalidate it for insufficiency. The description must be such as to enable a person skilled in the art or the field of the invention to produce it using only the instructions contained in the disclosure. Here, the specification mentioned only briefly the part played by the inventor in creating this new variety. The specification was limited to describing the basic materials used for cross-breeding. There was no indication of the genetic engineering involved so that even someone skilled in the science of the invention could not arrive at the same result as the inventor without further explanation. Apart from steps which appear to be obvious and common knowledge for an experimenter skilled in the area, a person to whom the disclosure is addressed is not required to do or know more than what was disclosed in order to achieve the result wanted. It is apparent in the case at bar that the steps required for selective reproduction presented no problem. However, an experimenter could only discover the steps involved in the cross-breeding by empirical means.
The deposit of a sample of this new variety, by itself, does not meet the disclosure requirement set out at s. 36(1) of the Patent Act.
Having found that there was not sufficient disclosure of this soybean variety and that it therefore could not be a patentable matter within the meaning of the Patent Act, it was not necessary to consider whether this new soybean variety could be regarded as an invention within the meaning of s. 2.
Cases Cited
Referred to: Re Application of Abitibi Co. (1982), 62 C.P.R. (2d) 81; Sarco Co. v. Sarco Canada Ltd., [1969] 2 Ex. C.R. 190; Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd., [1981] 1 S.C.R. 504; Ball v. Crompton Corset Co. (1886), 13 S.C.R. 469; Hoffmann‑LaRoche & Co. v. Commissioner of Patents, [1955] S.C.R. 414; Shell Oil Co. v. Commissioner of Patents, [1982] 2 S.C.R. 536; Northern Electric Co. v. Brown's Theatres Ltd., [1941] S.C.R. 224; Gerrard Wire Tying Machines Co. v. Cary Manufacturing Co., [1926] Ex. C.R. 170; Minerals Separation North American Corp. v. Noranda Mines Ltd., [1947] Ex. C.R. 306; Burton Parsons Chemicals Inc. v. Hewlett‑Packard (Canada) Ltd., [1976] 1 S.C.R. 555; Monsanto Co. v. Commissioner of Patents, [1979] 2 S.C.R. 1108; Commissioner of Patents v. Winthrop Chemical Co., [1948] S.C.R. 46; American Cyanamid Co. (Dann's) Patent, [1971] R.P.C. 425; Tennessee Eastman Co. v. Commissioner of Patents, [1974] S.C.R. 111.
Statutes and Regulations Cited
European Patent Convention, Art. 83.
Federal Court Act, R.S.C. 1970 (2nd Supp.), c. 10, s. 52(c).
German Patent Law (1981), s. 35(2).
Patent Act, R.S.C. 1970, c. P‑4, ss. 2 "patent", "invention", 28(1), 36, 37, 42, 44 [am. R.S.C. 1970 (2nd Supp.), c. 10, s. 64].
Patent Cooperation Treaty, 28 U.S.T. 7647, Art. 5.
Patents Act, 35 U.S.C. {SS} 112 (1982).
Patents Act 1977 (U.K.), 1977, c. 37, s. 14(3).
Authors Cited
Bull Alan T., Geoffrey Holt and Malcolm D. Lilly. Biotechnology: International Trends and Perspectives. Paris: O.E.C.D., 1982.
Canada. Patent Office. Manual of Patent Office Practice. Ottawa: Consumer and Corporate Affairs Canada, 1979.
Canada. Science Council of Canada. Seeds of Renewal: Biotechnology and Canada's Resource Industries, Report 38. Ottawa: Minister of Supply and Services, 1985.
Fox, Harold G. Canadian Patent Law and Practice, 4th ed. Toronto: Carswells, 1969.
Jessop, N. M. Biosphere: A Study of Life. Englewood Cliffs, N.J.: Prentice-Hall, Inc., 1970.
APPEAL from a judgment of the Federal Court of Appeal, [1987] 3 F.C. 8, 77 N.R. 137, affirming Commissioner of Patents refusal to grant a patent for the creation of a new plant variety. Appeal dismissed.
David Watson, Q.C., and Anthony Creber, for the appellant.
Barbara A. McIsaac, for the respondent.
//Lamer J.//
The judgment of the Court was delivered by
LAMER J. -- This appeal is from a judgment of the Federal Court of Appeal dismissing the appeal brought by appellant Pioneer Hi-Bred Limited ("Hi-Bred") against the refusal by respondent Commissioner of Patents to grant a patent for the creation of a new plant variety.
Facts
On May 18, 1983, Clark W. Jennings filed application No. 428,420 (class 47-4) pursuant to s. 28(1) of the Patent Act, R.S.C. 1970, c. P-4, to obtain patent rights to a new soybean variety known as "Soybean Variety 0877". The specification disclosed that the subject of this application is a plant line cultivated naturally but resulting from the artificial cross-breeding of three known varieties to produce a new variety combining the desirable characteristics of each one; the claims related to the plant, the pod and the seed. The invention is said to be unique of its kind and not to have existed previously in nature; among its chief characteristics are its high oil content, early maturity, stable high yields, resistance to seed shattering, and in particular, disease resistance to races 1 and 2 of Phytophthora megasperma var sojae as well as moderate resistance to another fungal pathogen, Sclerotinia sclerotiorium.
The documentation entered in the record indicates that the development of a new line occurs in four stages: selection and crossing of the parents (in the case at bar, Chippewa 64, Corsoy and Clark); development of a pure line by selective reproduction; analysis and testing of the line purification and commercial release of the new line. Different methods of crossing exist but all involve transferring genes from one variety to another. Such human intervention is necessary since the reproductive organs (male and female gametes) are contained in the same flower, protected against any external intrusion. Only "artificial" intervention will make it possible to hybridize two different lines and produce a new one.
The Patent Office Examiner rejected the application since in his opinion this new plant variety was not included in the definition of the word "invention" in s. 2 of the Patent Act; he added that Patent Office practice is to regard as non-patentable "Subject matter for a process for producing a new genetic strain or variety of a plant or animal, or the product thereof . . ." (section 12.03.01(a)). Appellant applied to the Commissioner of Patents for a review of the Examiner's decision. The Commissioner referred the matter to a Patent Appeal Board constituted by him, and the latter held a hearing at which appellant was represented. In its report the Board affirmed the Examiner's decision and found that the invention was not patentable within the meaning of the Patent Act. It further indicated that a restrictive interpretation should be given to the language contained in the definition of the word "invention" and consequently appellant's invention did not qualify as a manufacture. Finally, it stated that:
. . . the Commissioner has not only the right but the duty to determine if an application is directed to patentable subject matter and if, according to his determination, it is not patentable then he is permitted to refuse to grant a patent. In short, we do not agree with Mr. Watson when he says the only determination allowed for the Commissioner is novelty, utility and inventive ingenuity.
In deciding the review application, the Commissioner of Patents accepted the recommendations and findings of the Patent Appeal Board.
On appeal to the Federal Court of Appeal, [1987] 3 F.C. 8, Marceau J., in reasons concurred in by Lacombe J., said that in his opinion Canadian patent legislation does not expressly exclude living organisms from patentability. He also questioned the contention of the Commissioner of Patents that he could establish limits other than those chosen by Parliament to decide whether an invention is patentable. However, his primary concern was whether the subject-matter of the application, the new soybean variety, could be regarded as an invention in the sense in which the legislator understood this word. He answered this question as follows (at p. 14):
Besides, speaking of the intention of Parliament, given that plant breeding was well established when the Act was passed, it seems to me that the inclusion of plants within the purview of the legislation would have led first to a definition of invention in which words such as "strain", "variety" or "hybrid" would have appeared, and second to the enactment of special provisions capable of better adapting the whole scheme to a subject matter, the essential characteristic of which is that it reproduces itself as a necessary result of its growth and maturity.
Pratte J., for his part, raised the requirements of s. 36 of the Act for the first time in concurring reasons dismissing appellant's arguments. First, he suggested that the documentation submitted by Hi-Bred showed that a degree of "luck" had enabled it to obtain its new variety, and that therefore (at p. 9):
It follows that even a complete and accurate disclosure by the appellant of everything that the alleged inventor did to develop the new plant, would not enable others to obtain the same results unless they, by chance, would benefit from the same good fortune.
Secondly, he examined appellant's argument that the depositing of seeds with U.S. and Canadian governmental agencies was complete disclosure within the meaning of s. 36(1). He came to the conclusion that though in certain cases the availability of such samples would make it possible to produce the new plant variety, that did not mean the disclosure obligation had been met. He thereby rejected the viewpoint of the Patent Appeal Board in Re Application of Abitibi Co. (1982), 62 C.P.R. (2d) 81 which held that depositing a new micro-organism in a culture collection to which the public had access was sufficient to satisfy the requirements of s. 36(1) of the Patent Act (at pp. 9-10):
The use of the seeds deposited by the appellant is, in a sense, the use of the invention itself. Subsection 36(1), as I read it, requires that the description be such that third persons, who do not have access to the invention or anything produced by it, be enabled to reproduce it. This opinion conflicts with the conclusion reached by the Patent Appeal Board in the Abitibi case where it was held that depositing a new micro-organism in a culture collection to which the public had access was sufficient to satisfy the requirements of subsection 36(1). That conclusion of the Board was, in my opinion, clearly wrong and based on what I consider to be an untenable interpretation of the decision of the House of Lords in American Cyanamid Company (Dann's) Patent.
Issues
In this Court Hi-Bred was chiefly concerned with showing that the Federal Court of Appeal erred in holding that a new soybean variety obtained by cross-breeding but cultivated naturally did not represent an invention within the meaning of s. 2 of the Patent Act, and ruling that if Parliament had intended to place plants within the purview of the legislation it would have used a definition of the word "invention" in which words such as "strain", "variety" or "hybrid" would have appeared. It further contended that Pratte J. could not rule on the adequacy of the description when no objection had been raised by the Examiner or the Commissioner, and that he erred in concluding that the depositing of seeds did not meet the requirements of s. 36(1) of the Patent Act when the subject-matter of the application was a plant or seed.
Respondent, for its part, relied on the opinion of Marceau J. and argued that the wording of s. 2 does not allow patent protection to be extended to a new plant variety. In any case, he maintained, s. 36(1) clearly requires that the disclosure should not only make possible reproduction of the invention but also, and most importantly, its realization, which in light of the specification seems to be impossible.
This appeal in fact raises two fundamental questions:
-- Does a new variety of soybean resulting from artificial cross‑breeding represent an invention within the meaning of s. 2 of the Patent Act?
-- Does the specification submitted in support of the application meet the requirements of s. 36(1) of the Patent Act?
Legislation
I feel that the applicable provisions of the Patent Act should be set out:
2. In this Act, and in any rule, regulation or order made under it,
. . .
"invention" means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter;
. . .
"patent" means letters patent for an invention;
28. (1) Subject to the subsequent provisions of this section, any inventor or legal representative of an inventor of an invention that was
(a) not known or used by any other person before he invented it,
(b) not described in any patent or in any publication printed in Canada or in any other country more than two years before presentation of the petition hereunder mentioned, and
(c) not in public use or on sale in Canada for more than two years prior to his application in Canada,
may, on presentation to the Commissioner of a petition setting forth the facts (in this Act termed the filing of the application) and on compliance with all other requirements of this Act, obtain a patent granting to him an exclusive property in such invention.
. . .
(3) No patent shall issue for an invention that has an illicit object in view, or for any mere scientific principle or abstract theorem.
36. (1) The applicant shall in the specification correctly and fully describe the invention and its operation or use as contemplated by the inventor, and set forth clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most closely connected, to make, construct, compound or use it; in the case of a machine he shall explain the principle thereof and the best mode in which he has contemplated the application of that principle; in the case of a process he shall explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions; he shall particularly indicate and distinctly claim the part, improvement or combination which he claims as his invention.
(2) The specification shall end with a claim or claims stating distinctly and in explicit terms the things or combinations that the applicant regards as new and in which he claims an exclusive property or privilege.
37. On each application for a patent a careful examination shall be made by competent examiners to be employed in the Patent Office for that purpose.
42. Whenever the Commissioner is satisfied that the applicant is not by law entitled to be granted a patent he shall refuse the application and, by registered letter addressed to the applicant or his registered agent, notify the applicant of such refusal and of the ground or reason therefor.
44. Every person who has failed to obtain a patent by reason of a refusal or objection of the Commissioner to grant it may, at any time within six months after notice as provided for in sections 42 and 43 has been mailed, appeal from the decision of the Commissioner to the Federal Court and that Court has exclusive jurisdiction to hear and determine such appeal.
Analysis
(1)First question: is this an invention within the meaning of the Patent Act?
More than a century ago Darwin developed the theory that only species and individuals that can adapt and acquire new characteristics can survive and reproduce. The same principle underlies the experiments which through genetic engineering now make possible adaptation to specific environments or new uses of known living organisms.
The real issue in this appeal is the patentability of a form of life. This is in fact a claim for a new product developed in the field of biotechnology, an area of activity taking in all types of techniques having a common purpose, "the application of scientific and engineering principles to the processing of materials by biological agents to provide goods and services" (A. T. Bull, G. Holt and M. D. Lilly, Biotechnology: International Trends and Perspectives (1982), at p. 21). This is regarded by many as the latest technological system to be developed in the 20th century and the harbinger of a new era, and we must therefore be very cautious regarding the scope of our pronouncements.
Genetic engineering can occur in two ways. The first involves crossing different species or varieties by hybridization, altering the frequency of genes over successive generations. The main consequence of this intervention is to oppose within the same cell allelic genes, that is, opposing characteristics which replace each other alternately in the hereditary process, as a consequence of the alternate action of their dominant genes. Naturally, the genes only offer a reasonable prospect that the traits will be acquired from one generation to the next. It should further be remembered that acquiring a certain characteristic does not automatically mean developing that characteristic: some effects in gene development and the influence of environment can cause genetic mutations. Besides it appears that "[V]arious studies indicate that mutations take place at random in time and space, having no relation to possible survival value" (N. M. Jessop, Biosphere: A Study of Life (1970), at p. 294). There is thus human intervention in the reproductive cycle, but intervention which does not alter the actual rules of reproduction, which continues to obey the laws of nature.
This procedure differs from the second type of genetic engineering, which requires a change in the genetic material -- an alteration of the genetic code affecting all the hereditary material -- since in the latter case the intervention occurs inside the gene itself. The change made is thus a molecular one and the "new" gene is thus ultimately the result of a chemical reaction, which will in due course lead to a change in the trait controlled by the gene. While the first method implies an evolution based strictly on heredity and Mendelian principles, the second also employs a sharp and permanent alteration of hereditary traits by a change in the quality of the genes.
The genetic engineering performed by Hi-Bred is of the first type. Hi-Bred obtained this new soybean variety by hybridization, that is by crossing various soybean plants so as to obtain a unique variety combining the desirable traits of each one. This is why, as the Hi-Bred patent application explains, selective reproduction was necessary after crossing: making the new line grow, keeping only plants with the desired characteristics and repeating the operation for a sufficient number of generations to ensure that the soybean plants will finally contain only genes having the ideal traits. In this connection I would mention that the passages included in evidence in the record of the Court by Hi‑Bred give a good idea of the various procedures used to obtain improved soybean varieties.
The Hi-Bred argument rests on the particular characteristic of the reproductive cycle of the soybean. The male and female gametes are contained in the flower and are protected from almost any intrusion at the time of reproduction. "Artificial" intervention is thus necessary to alter the cycle. The scope for "natural" crossing is therefore almost nil. Appellant argued that human intervention and the innovative nature of this new variety are conclusive and allow it to "qualify" for a patent under the Patent Act.
The intervention made by Hi-Bred does not in any way appear to alter the soybean reproductive process, which occurs in accordance with the laws of nature. Earlier decisions have never allowed such a method to be the basis for a patent. The courts have regarded creations following the laws of nature as being mere discoveries the existence of which man has simply uncovered without thereby being able to claim he has invented them. Hi‑Bred is asking this Court to reverse a position long defended in the case law. To do this we would have, inter alia, to consider whether there is a conclusive difference as regards patentability between the first and second types of genetic engineering, or whether distinctions should be made based on the first type of engineering, in view of the nature of the intervention. The Court would then have to rule on the patentability of such an invention for the first time. The record contains no scientific testimony dealing with the distinction resulting from use of one engineering method rather than another or the possibility of making distinctions based on one or other method.
In view of the complexity presented by the question as to the cases in which the result of genetic engineering may be patented, the limited interest shown in this area by the parties in their submissions, and since I share the view of Pratte J. that Hi-Bred does not meet the requirements of s. 36(1) of the Act, I choose to dispose of this appeal solely on the latter point.
(2)Second question: have the requirements of s. 36(1) of the Patent Act been met?
Hi-Bred argued that, contrary to the opinion of Pratte J., the requirements of s. 36(1) have been met in the case at bar. The practice of depositing samples of an invention is now well established in both Canada and the United States: where such deposit is accompanied by a description of the steps taken by the inventor, the public is fully able to make use of the invention, and this complies with the wording and purpose of s. 36. In any case, it maintained that, under s. 44 of the Patent Act the Federal Court can only intervene provided the Commissioner of Patents has ruled on the subject of the appeal: since in the case at bar disclosure was only considered at the appellate level Pratte J. could not discuss it in his reasons for judgment.
I do not think there is any merit in this objection. Section 44 simply states that "Every person who has failed to obtain a patent by reason of a refusal or objection of the Commissioner to grant it may . . . appeal from the decision of the Commissioner to the Federal Court . . . ." Such an appeal will be heard by the Federal Court of Appeal, whose general appellate powers under s. 52(c) of the Federal Court Act, R.S.C. 1970 (2nd Supp.), c. 10, include dismissing the appeal or giving the decision that should have been given. Accordingly, s. 44 of the Patent Act gives the Federal Court exclusive jurisdiction to hear and determine an appeal once the Commissioner has indicated an objection or refusal in respect of a patent application. The Federal Court of Appeal may even discuss aspects of the matter not commented on by the Commissioner (Thurlow J. in Sarco Co. v. Sarco Canada Ltd., [1969] 2 Ex. C.R. 190). The power contemplated by this section enables the Federal Court to arrive at its own conclusions on the evidence presented, not merely to determine whether the Commissioner's conclusions are correct in law (p. 193).
Turning now to the question at issue, what the Court must decide may be stated as follows:
-- Did Hi-Bred make a sufficient disclosure of its invention in the description submitted by it in its specification?
-- If not, does the depositing of samples of seed of this new variety with the authorities constitute disclosure within the meaning of s. 36(1) of the Patent Act?
In Canada the granting of a patent means the kind of contract between the Crown and the inventor in which the latter receives an exclusive right to exploit his invention for a certain period in exchange for complete disclosure to the public of the invention and the way in which it operates. The state of Canadian patent law may be summarized as follows, adopting the observations of Harold G. Fox, Canadian Patent Law and Practice (4th ed. 1969), at p. 163:
The consideration for the grant is double: first, there must be a new and useful invention, and secondly, the inventor must, in return for the grant of a patent, give to the public an adequate description of the invention with sufficiently complete and accurate details as will enable a workman, skilled in the art to which the invention relates, to construct or use that invention when the period of the monopoly has expired. The function of the description contained in the specification is both to enable the construction and use of the devices contained therein after the expiry of the patent, and also to enable others to ascertain with some measure of exactness the boundaries of the exclusive privilege upon which they may not trespass during the exercise of the grant.
To use the words of Dickson J. (as he then was) in Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd., [1981] 1 S.C.R. 504, at p. 517, s. 36 "lies at the heart of the whole patent system". The exclusive exploitation of a patent, including the right to grant licences to exploit, rewards the inventor's intellectual effort while at the same time allowing better technical development, in particular by eliminating the practice of commercial secrecy.
The history of Canadian legislation in this area demonstrates that the obligation to disclose an invention has always been regarded as a prerequisite to the granting of a patent. I refer the reader in this regard to the analysis made by Dickson J. in Consolboard Inc., supra, at 518-19. It follows that all inventions are not necessarily patentable, even if they are the work of an inventive genius (Ball v. Crompton Corset Co. (1886), 13 S.C.R. 469), they produce a new industrial result when compared with the mass of current knowledge (Hoffmann-LaRoche & Co. v. Commissioner of Patents, [1955] S.C.R. 414; Shell Oil Co. v. Commissioner of Patents, [1982] 2 S.C.R. 536), and are commercially useful (Northern Electric Co. v. Brown's Theatres Ltd., [1941] S.C.R. 224). Section 36(1) was enacted so competitors could know the limits within which they should avoid infringing the subject of the invention and be aware of their freedom of maneuver when they work in an area related to that of the patentee.
Disclosure also has an important part to play in identifying the steps followed and distinguishing between the discovery of a theoretical principle or of a product occurring in nature and an invention which requires human activity for its development. This distinction is crucial in the field of patents, since only the latter is an invention within the meaning of the Act, unless the former is associated with a new method of implementation giving a new and unique result (Gerrard Wire Tying Machines Co. v. Cary Manufacturing Co., [1926] Ex. C.R. 170). The specification will thus facilitate the work of the Examiner and of the Commissioner of Patents as well as the task of the appellate courts.
It appears to me that the duty of disclosing the steps followed in arriving at an invention is a general principle of patent law recognized by the domestic legislation of many countries (in the United Kingdom, see the Patents Act 1977 (U.K.), 1977, c. 37, s. 14(3); in the U.S., see 35 U.S.C. {SS} 112 (1982); see also the West German legislation, in s. 35(2)) and international treaties (Patent Cooperation Treaty, June 19, 1970, 28 U.S.T. 7647, Art. 5; European Patent Convention, October 5, 1973, Art. 83).
In summary, the Patent Act requires that the applicant file a specification including disclosure and claims (Consolboard Inc., supra, at p. 520). Canadian courts have stated in a number of cases the test to be applied in determining whether disclosure is complete. The applicant must disclose everything that is essential for the invention to function properly. To be complete, it must meet two conditions: it must describe the invention and define the way it is produced or built (Thorson P. in Minerals Separation North American Corp. v. Noranda Mines Ltd., [1947] Ex. C.R. 306, at p. 316). The applicant must define the nature of the invention and describe how it is put into operation. A failure to meet the first condition would invalidate the application for ambiguity, while a failure to meet the second invalidates it for insufficiency. The description must be such as to enable a person skilled in the art or the field of the invention to produce it using only the instructions contained in the disclosure (Pigeon J. in Burton Parsons Chemicals Inc. v. Hewlett-Packard (Canada) Ltd., [1976] 1 S.C.R. 555, at p. 563; Monsanto Co. v. Commissioner of Patents, [1979] 2 S.C.R. 1108, at p. 1113) and once the monopoly period is over, to use the invention as successfully as the inventor could at the time of his application (Minerals Separation, supra, at p. 316).
I come now to the consideration of appellant's invention. I reproduce the passage from the specification relating to the resolution of the point at issue:
Seeds that can be used for the production of soybean Variety 0877 have been deposited at the Plant Variety Protection (PVP) Office of the U.S. Department of Agriculture, Beltsville, Maryland, under Application No. 8000028. Samples of Variety 0877 seed for experimental purposes are freely available upon request to Pioneer Hi‑Bred Limited, P. O. Box 730, N. 2 Highway West, Chatham, Ontario, N7M 5L1.
Soybean Variety 0877 was developed from the cross (Clark X Chippewa 64) X Corsoy which was made in 1967. The F1 of the cross was grown in Chile during the winter of 1967-68 and the F2 population was grown in Iowa in 1968. Variety 0877 was selected as a single F2 plant during that year and its progeny evaluated for yield in a single plant row during 1969.
Variety 0877 was evaluated for yield and other attributes in replicated plots during the years 1970 through 1982. In 1976, single rows, each derived from a different F9 plant, were grown and evaluated for uniformity of traits. Any variant rows were discarded and the remaining uniform rows were bulked together to constitute the pure line variety. Since 1976, variety 0877 has been found to be uniform within for all traits with no evidence of any variants. Its reproduction of all traits has been observed by the breeder to be stable throughout all 6 generations since 1976.
Variety 0877 can be produced from seed thereof by methods well known in the art for producing and harvesting soybeans. Specifically, the quantity of purified seed produced during 1976 constituted approximately 1 bushel. During 1977, a portion of the 1 bushel of seed was planted on 1/2 acre and was observed to be uniform for all traits and void of any variants. Approximately 20 bushels of seed were produced. During 1978, approximately 15 acres of variety 0877 were grown which produced over 500 bushels of seed. Since 1978, variety 0877 has been grown and observed to be uniform for all traits and lacking any variants.
Soybean Variety 0877 most closely resembles the variety Hardome, both varieties having gray hila. Variety 0877, however, is characterized by its resistance to the fungus Phytophthora megasperma var sojae (races 1 and 2); whereas Hardome is susceptible. (The term "race" as used herein signifies a subspecies or microspecies of the fungus species Phytophthera megasperma var sojae).
Also, Variety 0877 is significantly later maturing than is Hardome.
Under needle inoculation with the aforesaid fungus all plants of Hardome will become infected and die; all plants of Variety 0877 will be expected to live.
The seeds of Variety 0877 are oblong in shape and are quite large. They often have seed coats that appear to be oversized for the cotyledons, thus resulting in occasional wrinkled seed coats. Also, there is often visible a longitudinal discoloration of the seed coats (sometimes called a bleeding or spreading effect), stemming from the hila, if the plants have experienced considerable stress. Seed hila of Variety 0877 are very light grain in color, and under certain environmental conditions may appear yellow or light buff in color. When seeds of this type are planted, they produce progeny having light gray hila with varying color intensities present on each plant, according to ambient macro- and micro-environmental conditions.
The objective characteristics of Variety 0877 are set forth in the attached Example, in chart form, designated as Example A. This Example is described in twenty-three (23) sections.
. . .
To summarize the present invention, Variety 0877 is a high‑yielding soybean characterized by being resistant to root rot caused by the fungus Phytophthora megasperma var sojae (races 1 and 2) to which the variety Hardome (which it otherwise most closely resembles) is susceptible.
Only paragraphs 2 and 3 mention the part played by the inventor in creating this new variety. In this regard the specification is limited to describing the basic materials used for cross-breeding. There is no indication of the genetic engineering involved. Yet the documentation does demonstrate the existence of various methods of cross-breeding, whether used to improve the yield of a variety or to make it less vulnerable to disease. The choice has advantages and disadvantages and it would be many years before the results can be obtained, not to mention the money necessary for such an undertaking. In any case, the cross-breeding is the only really inventive work, since the selective reproduction is consistent with known Darwinian principles. I should also observe that the creation of a new plant variety cannot be compared with the first experiments of Mendel over a century ago: techniques have evolved and the purpose has changed, since man is trying to adapt living forms to new environments and new uses. The inventor himself admitted in an affidavit attached to appellant's record with the Patent Appeal Board that:
. . . unique controlled plant breeding techniques were employed, which resulted in transferring genetically a gene Rps1a for resistance to races 1 and 2 from one genetic background into a completely different and new genetic background.
I am persuaded that even someone skilled in the science of the invention could not arrive at the same result as the inventor without further explanation. In his text cited above (at p. 170), Fox mentions that the courts have held an incomplete description to be sufficient where the record contains an affidavit by a workman skilled in the art or science of the invention stating that he has been able to arrive at the invention claimed without other instructions than the specification itself. Without making any ruling on the validity of such a principle, I would observe that appellant did not submit any such affidavit to the Court.
Finally, I am unable to share appellant's argument when it says that the fact the invention was discovered partly by chance does not necessarily mean "that someone else could not retrace the path that he described in the specification". It is nonetheless clear that apart from steps which appear to be obvious and common knowledge for an experimenter skilled in the art, a person to whom the disclosure is addressed "is not required to exercise or to be possessed of more, and, if the specification contains something that necessitates the working out of a problem, the patent cannot be supported" (see Fox, op. cit., at p. 171). It is apparent in the case at bar that the steps required for selective reproduction present no problem. However, an experimenter could only discover the steps involved in crossing by empirical means. Without hypothesizing as to why appellant did not comply with the disclosure requirement, I have to say that either Hi-Bred was negligent in failing to describe its procedure correctly or it did indeed make the discovery by chance.
I now turn to the second argument made. Appellant contended that the depositing of seed samples of this new variety with the proper authorities met the requirements of s. 36(1) and constituted a sufficient description of the invention. Its argument rested essentially on the decision by the Patent Appeal Board in Abitibi, supra. In that case a Patent Appeal Board had to consider the possibility of giving patent protection to a sediment process activated by foam flotation, the invention also involving a process for the biodegrading of spent sulfite waste, which is a by-product of wood pulp manufacture. The Examiner accepted the claims for the process but rejected those regarding the culture system. The Commission reviewed the decisions rendered in Canada and abroad and recommended that the claims be accepted. On the question of disclosure, it found that the depositing of a sample in a microbial culture available to the public was sufficient, since it will be possible for anyone skilled in the art involved in the invention to reproduce, make or use the invention. Counsel for the appellant is asking the Court also to consider the import of a negative judgment of this Court on biotechnology research and development on plant varieties in Canada. We were even referred to a study by the Science Council of Canada, Seeds of Renewal: Biotechnology and Canada's Resource Industries (1985), Report 38, suggesting that special protection should be enacted "to ensure that plant breeders can obtain a reasonable return on a new variety" (p. 37).
It is true that most countries give the producers of new plant varieties special protection; even in Canada, several legislative proposals for this purpose have appeared over the years. Though this kind of legislation might act as a catalyst in the development of scientific research in Canada, I consider that this Court does not have the right to stretch the scope of patent protection beyond the limits of existing legislation. Accordingly, since the Patent Act contains no provisions relating directly to biotechnological inventions and new forms of life in particular, this new soybean variety will only be patentable if it meets the traditional conditions and requirements for a patent.
There is no ambiguity in the wording of s. 36(1): the inventor must describe not only how the invention can be used but also how a third party can make it; nowhere does it say that the deposit by itself of a sample of the invention will meet the disclosure requirement. To adopt the language of Rand J. in Commissioner of Patents v. Winthrop Chemical Co., [1948] S.C.R. 46, at p. 57, cited by Pigeon J. in Tennessee Eastman Co. v. Commissioner of Patents, [1974] S.C.R. 111, at p. 121:
. . . the intention of a legislature must be gathered from the language it has used and the task of construing that language is not to satisfy ourselves that as used it is adequate to an intention drawn from general considerations or to a purpose which might seem to be more reasonable or equitable than what the language in its ordinary or primary sense indicates.
While it is true that competitors may obtain the new variety by this means and exploit it commercially for a fraction of the original cost borne by appellant, deposit of the seed by itself does not comply with the applicable law. It might be that in certain circumstances, the deposit may contribute to complete the description; I do not rule out this possibility but I do not find it applicable to the case at bar. Before concluding, I would simply say that my observations should not be taken as directed at patent applications for micro‑organisms, though such a practice had never been endorsed by Canadian courts. Also, I express no opinion on the correctness of the observations made by Pratte J. in this regard. I note, however, that the practice of a deposit is simply intended to require the applicant submitting a process involving a micro‑organism unknown and inaccessible to the public as a necessary part of reproducing the invention to deposit a culture of the micro-organism with the authorities. In Abitibi, as in American Cyanamid Co. (Dann's) Patent, [1971] R.P.C. 425 (H.L.), cited by appellant in support of its arguments, the patent application was not for the micro-organism deposited: the latter was simply a component of the patented process, not the subject of the invention.
Having found that there was not sufficient disclosure of this soybean variety and that it therefore cannot be a patentable matter within the meaning of the Patent Act, it is neither necessary nor desirable for the reasons already given to consider in this appeal whether this new soybean variety can be regarded as an invention within the meaning of s. 2. I would accordingly dismiss the appeal. There shall be no adjudication as to costs.
Appeal dismissed.
Solicitors for the appellant: Gowling & Henderson, Ottawa.
Solicitor for the respondent: Frank Iacobucci, Ottawa.