T-793-74
Monsanto Company (Plaintiff)
v.
Commissioner of Patents (Defendant)
Trial Division, Kerr J.—Ottawa, December 9,
1974; January 10, 1975.
Jurisdiction—Patents—Disclaimer—Commissioner's refus
al to record—Mandamus sought by patentee—Case against
decision established—Decision of Commissioner was quasi-
judicial—Relief should be judicial review and not man-
damus—Jurisdiction in Court of Appeal over judicial
review—Patent Act, R.S.C. 1970, c. P-4, s. 51, Federal Court
Act, s. 2, 18, 28—Federal Court Rule 337(2)(b).
The plaintiff, owner of a Canadian patent, sought to file with
the Commissioner of Patents, a "disclaimer" under section 51
of the Patent Act. The Commissioner refused to record the
disclaimer. A writ of mandamus, requiring the Commissioner
to do so, was sought by the plaintiff.
Held, dismissing the action, the plaintiff was correct in
certain of its contentions: (1) On a proper interpretation of
section 51 of the Patent Act, a disclaimer was not limited to the
subject-matter of complete claims, but extended to parts of the
subject-matter covered by individual claims. (2) The Commis
sioner's allegation that the plaintiff, in its recourse to section
51, was seeking to circumvent the time limit imposed by
section 50 (re-issues of patents) was not supported by the
record. (3) There was a "mistake" within the phrase in section
51, "mistake, accident or inadvertence", in that the plaintiff
had included, as part of the invention, a certain named com
pound, unknown to the patentee prior to the issue of the patent,
which had been disclosed in a German patent of 1940. (4) If
the Commissioner determined that a document was a disclaim
er within section 51 and the conditions for its recording were
met, the Commissioner had a duty to record itjHowever, the
claim for relief here fell under section 28 of the Federal Court
Act. - The Commissioner of Patents was a "federal board co
mission or other tribunal" as defined in section 2 of the Federal
Court _Act. The decision to recur or not to record a disclaimer
was a decisioniriLan administrative nature required by law to
be made on a judicial or quasi-judicial basis. The Federal Court
of Appeal had jurisdiction toheatand determine an application
under section 28(1) to review and set aside the Commissioner's
r ffusal.
Conse. uentl , the Trial Divisi.. 1.d no 'uri di tion to
grant relief .y way o mandamus under section 18 of the Act
Canadian Celanese Ltd. v. B.V.D. Company Ltd. (1939)
56 R.P.C. 122; Trubenizing Process Corporation v. John
Forsyth Ltd. (1943-44) 3 Fox Pat. C. 123, applied. AMP
Incorporated v. Hellerman Ltd. [1962] R.P.C. 55, dis
cussed. Farbwerke Hoechst Aktiengesellschaft v. Com
missioner of Patents [1966] S.C.R. 604, considered.
Howarth v. National Parole Board (1974) 18 C.C.C. (2d)
385 (Can.) followed.
ACTION.
COUNSEL:
David Watson, Q. C., for plaintiff.
G. W. Ainslie, Q.C., for defendant.
SOLICITORS:
Gowling & Henderson, Ottawa, for plaintiff.
Deputy Attorney General of Canada for
defendant.
The following are the reasons for judgment
rendered in English by
KERR J.: This action relates to the refusal of the
Commissioner of Patents to record in the Patent
Office a document which the plaintiff sought to
file and have recorded as a "disclaimer" under
section 51 of the Patent Act, R.S.C. 1970, c. P-4,
which reads as follows:
51. (1) Whenever, by any mistake, accident or inadvertence,
and without any wilful intent to defraud or mislead the public,
a, patentee has
(a) made his specification too broad, claiming more than
that of which he or the person through whom he claims was
the first inventor, or
(b) in the specification, claimed that he or the person
through whom he claims was the first inventor of any
material or substantial part of the invention patented of
which he was not the first inventor, and to which he had no
lawful right,
he may, on payment of the prescribed fee, make disclaimer of
such parts as he does not claim to hold by virtue of the patent
or the assignment thereof.
(2) Such disclaimer shall be in writing, and in duplicate, and
shall be attested by one or more witnesses; one copy thereof
shall be filed and recorded in the office of the Commissioner;
the other shall be attached to the patent and made a part
thereof by reference; the disclaimer shall thereafter be deemed
to be part of the original specification.
(3) No disclaimer affects any action pending at the time
when it is made, except as to unreasonable neglect or delay in
making it.
(4) In case of the death of the original patentee or of his
having assigned the patent, a like right to disclaim vests in his
legal representatives, any of whom may exercise it.
(5) The patent shall, after disclaimer as provided in this
section, be deemed to be valid for such material and substantial
part of the invention, definitely distinguished from other parts
thereof claimed without right, as is not disclaimed and is truly
the invention of the disclaimant, and the disclaimant is entitled
to maintain an action or suit in respect of such part
accordingly.
The plaintiff is the owner of Canadian Patent
594,237, granted on March 15, 1960, for an inven
tion entitled "Herbicides". The disclaimer was
submitted to the Patent Office with a letter from
the plaintiff's firm of solicitors and patent agents,
dated November 26, 1973.
The Commissioner refused to record the dis
claimer on the ground that only the subject-matter
of complete claims should be permitted to be
disclaimed, and not part of the subject-matter
covered by individual claims.
In its statement of claim herein the plaintiff
claims that the Commissioner erred in holding that
only whole claims, not parts of claims, could be
disclaimed; and in this action the plaintiff asks for
a writ of mandamus under section 18 of the
Federal Court Act requiring that the Commission
er record the disclaimer.
In his defence the Commissioner says that what
is sought by the plaintiff to be done is what can be
done under section 50 of the Patent Act by way of
re-issue, but only within 4 years of the date of
issue of the patent, and the plaintiff is seeking to
circumvent the time limit imposed by section 50 by
recourse to the disclaimer provisions.
An agreed statement of facts, Exhibit 1, to
which are attached copies of the specification,
claims and grant of the patent and other docu
ments marked Exhibits "A" to "H", was received
in evidence for the purposes of the action.
The letter, Exhibit "B", which accompanied the
disclaimer, contains the following paragraph which
indicates in general terms what was being
disclaimed:
It will be apparent from the disclaimer that this is being filed
because it was learned after the patent had issued that the
compound N-methyl-a-chloroacetanilide had been disclosed in
a German patent issued in 1940. The parts of the invention
patented that are being disclaimed are therefore the example
relating to the preparation of this compound, the reference to it
in the specification in relation to its herbicidal effect and also
its inclusion in the generic formula defining compounds in
accordance with the invention.
The disclaimer itself, Exhibit "C", reads in part
as follows:
AND WHEREAS the specification was made too broad and
there was included as part of the invention the compound
N-methyl-a-chloroacetanilide, which compound unknown to
the patentee prior to the issuance of said patent, had been
disclosed in German Patent 695,907 dated September 5, 1940,
a copy and a translation of which are annexed hereto; accord
ingly the definition of R 1 and R2 at page 4, line 10 and claim 1,
line 4 from the end, in the situation where one of R I and R2 is a
phenyl radical, was too broad in that the other of said R, and
R2 should have had from two to six carbon atoms so as to
exclude methyl.
NOW THEREFORE, the undersigned disclaims the following
parts of the invention patented:
(a) Aliphatic radicals having one carbon atom from the
definitions of R1 and R 2 at page 4, line 10 of the specification
and in claim 1 line 4 from the end'.
(b) Example 7 at page 9, lines 12 to 23 of the specification;
(c) The compound N-methyl-a-chloroacetanilide referred to
at page 1 I, line 14 of the specification.
The Commissioner replied as follows to the
letter from the solicitors:
Due to several attempts made by patentees to give up only
some of the subject matter covered by individual claims, I have
come to the conclusion some time ago that only the subject
matter of complete claims should be permitted to be dis
claimed. A notice advising the Patent Profession of this practice
was published in the issue of January 27, 1970 of the Patent
Office Record.
Lines 7 to 1I on page 4 of the specification, to which the
disclaimer applies, read as follows:
... and further provided that when one of the R I and R2
symbols is a phenyl radical, the other of said R I and R2
symbols represents an aliphatic radical having up to six
carbon atoms; and further provided that only one of the R I
and R2 symbols is hydrogen.
The last 5 lines of Claim 1 read as follows:
... and further provided that when one of the R I and R2
symbols is a phenyl radical, the other of said R I and R2
symbols represents an aliphatic radical having up to six
carbon atoms; and further provided that only one of the R1
and R2 symbols is hydrogen; and in addition containing a
conditioning agent.
In view of the clear wording of the above notice and of our
office practice since it was published, you are hereby advised
that your request to enter such a disclaimer is refused.
The notice to the patent profession, Exhibit "F",
was as follows:
Notice to the Patent Profession
Disclaimer Practice
In view of the increased filings of disclaimers in which paten-
tees are attempting to give up only some of the subject matter
covered by individual claims, practitioners are advised that the
Office will record disclaimers only when directed to complete
claims. Where Section 51(1) refers to disclaimer of "parts" of
the invention, it will be interpreted as relating only to complete
claims.
It may be noted that Section 64 also refers to "parts" of a
patent. Since the only parts of a patent other than the whole
which may be declared void under Section 64 (when read in
conjunction with Section 62) are claims, I consider the same
interpretation for "parts" of the invention must be used in
interpreting Section 51. Furthermore, the introduction of new
claims and the amendment of claims already issued is contrary
to the meaning of the word "disclaimer", and it is improper to
renounce a claim to something by attempting to claim some
thing else. It is also apparent from the nominal fee charged for
disclaimer it must be considered a simple clerical matter, and
one which would not require an assessment of new claims.
The plaintiffs solicitors then wrote a letter,
Exhibit "G", to the Commissioner making submis
sions that the disclaimer should be recorded. I will
refer to those submissions later herein.
The Commissioner maintained his previous
stand and replied as follows:
- Your letter makes reference to several sections of the Patent
Act, judicial decisions and Walker on Patents in support of
your arguments to renounce part of claim 1 by way of a
disclaimer. However, after careful consideration of your argu
ments, I am still of the firm opinion that only complete claims
should be permitted to be disclaimed.
Section 64 of the Patent Act authorizes the recording of a
judgment voiding in whole or in any part any patent. When this
section is read in conjunction with section 62, it is apparent that
the parts of a patent referred to in section 64 are claims. It is
therefore my stand that the parts referred to in section 51(1)
are the same as the parts which may be voided by judgment
under section 64 which can only be whole claims. Consequent
ly, it is [...] position that the amendment of an issued claim by
renouncing a part of it is contrary to the meaning of the word
"disclaimer".
I cannot agree with your contention that the Patent Office
has no jurisdiction to examine disclaimers, but instead is only
required to record them. The public interest would not be
served if partial disclaimers to claims were permitted which
result in indefiniteness and uncertainty as to what is still being
claimed. Therefore, I am firmly convinced that I have the
responsibility to refuse to record a disclaimer if it is not in fact
a disclaimer, and in order to make that determination without
assessing the content of the disclaimer, the disclaimer must
relate only to complete claims.
The principal issue is the interpretation to be
given to section 51 of the Patent Act.
In that respect I will next repeat verbatim the
succinct submissions contained in the letter,
Exhibit "G" above mentioned, from the plaintiffs
solicitors, which are substantially the same as
those put forward at the hearing by counsel for the
plaintiff:
It is submitted that in view of this well established body of
law, there is no reason to interpret Section 51 in a manner
inconsistent with these decisions and unjustified by the wording
of the Section.
In the Notice to the Patent Profession of January 27, 1970, it
is also stated "Furthermore, the introduction of new claims and
the amendment of claims already issued is contrary to the
meaning of the word "disclaimer", and it is improper to
renounce a claim to something by attempting to claim some
thing else." It is submitted that in the present instance, no
attempt is being made to introduce new claims or to renounce a
claim by attempting to claim something else. What we have
here is indeed submitted to be a classic case of a proper
disclaimer which fits in with the meaning and definitions of the
word disclaimer. Applicant was required by Section 36(2) of
the Patent Act to state in his claims what he regarded as new
and in which he claimed an exclusive property or privilege and
this is something that applicant did in accordance with his best
information at the time. As explained in our letter of November
26, it was learned after the patent had issued that the com
pound N-methyl-a-chloroacetanilide had been disclosed in a
German patent issued in 1940. The patentee therefore desires
to disclaim this compound which was originally included as
part of the invention patented. If part of a claim cannot be
disclaimed in the manner proposed, then the operation of the
disclaimer section would be limited to a situation in which by
luck there was some narrow claim excluding the prior art
reference which was unknown to the patentee at the date of
issuance. There would seem to be nothing as a matter of
principle in the text of Section 51 which would limit the
application of disclaimers in this fashion. Indeed, disclaimers
would be redundant as if there was a separate claim accurately
defining the remaining part of the invention then the patentee
could rely on Section 60 of the Patent Act which would require
that effect be given to the patent as if it contained only the
valid claim. There would therefore be no need or advantage in
filing a disclaimer.
It is submitted therefore that the disclaimer should be
recorded in accordance with Section 51 of the Patent Act.
On the question of interpretation counsel for the
Commissioner made submissions 2 principally to
the effect:
(a) that the phrase in section 51 "make dis
claimer of such parts as he does not claim to
hold" relates to "claim or claims", and counsel
referred to section 60, which provides that where
a patent contains two or more claims and one or
more of them is or are held to be valid but
another or others is or are held to be invalid or
void, effect shall be given to the patent as if it
contained only the valid claim or claims, and to
section 64, which provides that a certificate of a
judgment "voiding in whole or in part any pat
ent" may be entered on the margin of the
enrolment of the patent in the Patent Office,
whereupon "the patent or such part thereof as is
so voided shall thereupon be and be held to have
been void and of no effect".
(b) that it is clear from the provisions of the
Patent Act, particularly sections 35 and 36, and
the relevant jurisprudence, that an inventor in
his specification must not only "correctly and
fully describe" the invention, but that. he must
"particularly indicate and distinctly claim" the
parts, improvements or combinations which he
claims as his invention; the inventor in drafting
his claims is under an obligation to clearly and
precisely define or delimit in each claim the
invention, or portion thereof, for which he seeks
an exclusive monopoly; a claim that is too broad
and not supported by the disclosure, or that
includes things which are not new, does not give
rise to a monopoly; hence in any patent there
can be a series of claims, each of which will
delineate with precision that portion of the
invention disclosed in the disclosure for which
the inventor seeks a monopoly, and the totality
of the claims will constitute the parts of the
invention, with each claim being a "part" that
can, under section 51, be disclaimed;
2 In outlining his submissions I have been assisted by a
written memorandum supplied by him.
(c) that the phrase "such parts as he does not
claim to hold", in section 51, indicates that in
making the disclaimer the patentee is under an
obligation to disclaim the claims that do not
embody the invention made and disclosed by the
inventor; and the clear Parliamentary intention
is that a disclaimer must operate in respect of
one or more of the claims and is not to be used
as a device for reformulating or, redefining the
invention disclosed and claimed. The definition
of "disclaimer" in the Shorter Oxford Diction
ary is "to renounce a legal claim".
(d) that the portion of section 51(5), which
provides that after disclaimer the patent is
deemed "to be valid for such material and sub
stantial part of the invention, definitely distin
guished from other parts thereof claimed with
out right, as is not disclaimed ..." contains
words that are apt to describe a claim per se and
they are inapt to describe a portion only of the
subject-matter of a particular claim.
(e) that the interpretation given by the Com
missioner to section 51 that it cannot be used as
a means of reformulating claims is in accord
with the scheme of the Act that he has a discre
tion in deciding whether or not a claim is one
that clearly and properly defines a patentable
invention; he has an obligation under the Act to
examine each application for letters patent of an
invention with a view to satisfying himself that
letters patent should issue in respect of each of
the claims disclosed in the application, and it
cannot be contemplated that it was the intention
of Parliament that patentees could use section
51 as a back door to avoid the duties of the
Commissioner to protect the public interest in
seeing that claims for which a monopoly is
granted by the state are ones that properly and
clearly disclose patentable inventions;
(f) that the interpretation of section 51 con
tended for by the plaintiff that amendments to
claims can be made by way of disclaimers that
could operate to change or alter the character of
the invention claimed, could frustrate the
scheme of the Act wherein
(i) an obligation has been imposed upon the
Commissioner to examine each application to
satisfy himself that a patent should issue in
respect of the claims therein, and
(ii) a discretion has been conferred upon him
in deciding whether to reissue a patent in
those cases where a patent is defective or
inoperative by reason that the patentee inter
alia has claimed more than he had a right to
claim;
(g) that the proper interpretation and relation
ship between section 50, which confers upon the
Commissioner a discretion as to whether or not
he will reissue a patent, and the provisions of
section 51, which provides that the Commission
er shall record the disclaimer, is that section 50
is the route to be used when the patentee wishes
to modify, alter or change existing claims, in
which case the Commissioner can consider the
merits of the application, and that section 51 is
the route to be used where the patentee wishes
to abandon, in its totality, a claim, in which case
there would be no need for the Commissioner to
consider the merits.
In reply, counsel for the plaintiff urged, inter
alia, that in this case the Commissioner had
already considered and granted a patent and the
patentee is merely giving up a defined part, not
reformulating a claim; that section 50 deals with
reissue in a situation in which the patent does not
carry into effect the original intention, which is a
different problem than the problem that section 51
deals with, and the law respecting reissuing should
not be held applicable to section 51 and disclaim
ers; that the interpretation contended for by the
plaintiff is consistent with the scheme of the Act;
and that there is no ambiguity in section 51 or the
meaning of the imperative word "shall" as therein
used.
In respect of the interpretation of section 51
there is, on the one hand, the contention of the
Commissioner that a disclaimer must be a dis
claimer of a whole claim, and, on the other hand,
the contention of the plaintiff that a disclaimer
need not be a disclaimer of a whole claim but may
be a disclaimer of part 3 of a claim.
I think that there is no dispute that section 51
should be read in its context, looking to the general
scheme or framework of the Act.
A disclaimer which did not disclaim a whole
claim was held to be a valid disclaimer by the
Judicial Committee of the Privy Council in
Canadian Celanese Ltd. v. B. V.D. Company Ltd 4 .
The section of the Act there under consideration
was section 50 of the Canadian Patent Act, 1935,
the wording of which is practically the same as the
wording of section 51 of the present Act. The
Supreme Court of Canada had held that the
patent was invalid on the ground that the claims
were too broad and embraced more than the
alleged invention disclosed in the body of the
specification, and that the claims, when thus con
strued, had been anticipated by several other pat
ents; but before judgment was entered on March
19, 1937, Canadian Celanese filed a disclaimer
under section 50 restricting in terms the scope of
the claims and expressly excluding therefrom that
which the Supreme Court had held to be too wide.
Canadian Celanese thereupon applied for a
rehearing so that the Court might in its formal
judgment provide for the disclaimer that had been
filed. The Supreme Court dismissed the applica
tion, and the case went to the Privy Council. The
specification ended with a number of process
claims, of which Claims 1 and 4 were typical,
reading [at page 1271 as follows:
Claim 1. A process for the manufacture of composite sheet
material which comprises subjecting a plurality of associated
fabrics, at least one of which contains a thermoplastic deriva
tive of cellulose, to heat and pressure, thereby softening said
derivative and uniting said fabrics.
Claim 4. A process for the manufacture of composite sheet
material which comprises treating a fabric containing a ther
moplastic derivative of cellulose with a softening agent,
associating it with another fabric, and uniting the fabrics by
subjecting them to heat and pressure.
The disclaimer was as follows [at page 128]:
And whereas, through mistake, accident or inadvertence and
without any wilful intent to defraud or mislead the public, the
specification has been made too broad, asserting a claim to
3 Using the word "part" in its dictionary meaning of "a part
of a whole".
4 (1939) 56 R.P.C. 122.
more than that of which Camille Dreyfus was the inventor.
Now therefore, the undersigned disclaims from the scope of
Claims 1 to 6 inclusive, and 25 the use of a fabric or fabrics
containing a thermoplastic derivative of cellulose except where
such thermoplastic derivative of cellulose is in the form of
yarns, filaments or fibres.
It further disclaims from the scope of Claims 7 to 12
inclusive, the use of a fabric or fabrics containing an organic
derivative of cellulose except where such organic derivative of
cellulose is in the form of yarns, filaments or fibres.
It further disclaims from the scope of Claims 13 to 18
inclusive, the use of a fabric or fabrics containing a cellulose
ester except where such cellulose ester is in the form of yarns,
filaments or fibres.
It further disclaims from the scope of Claims 19 to 24
inclusive, the use of a fabric or fabrics containing cellulose
acetate except where such cellulose acetate is in the form of
yarns, filaments or fibres.
The Judicial Committee refused to interfere
with the Supreme Court's dismissal, in the exercise
of its discretion, of the application for a rehearing,
but proposed that the Supreme Court's order be
varied and said at page 134:
There remains, however, a point of importance to be con
sidered. The order of the 19th of March, 1937, declared in
terms the Patent No. 265,960 to be invalid. A certificate of that
order may, under Section 62 of the Patent Act, 1935, be
entered on the margin of the enrolment of the Patent in the
Patent Office, in which case, as the Section provides, "the
patent or such part thereof as is so voided shall thereupon be
and be held to have been void and of no effect, unless the
judgment is reversed on appeal". In its present form the order
declares the whole Patent avoided; but the Patent as it now
exists is a Patent protecting the invention which is described in
the Specification as amended by virtue of the disclaimer. It is
obvious that no risk should be run of the Patent, as it now
exists, being avoided as a result of the present litigation. For
the purpose of avoiding any such risk, their Lordships proposed
a course, to which the Respondents assented, namely, that the
order of the 19th of March, 1937, should be varied by sub
stituting therein for the words "the Respondent's Patent No.
265,960 in question in this appeal" the words "the claims in
Patent No. 265,960 as made by the patentee in the specifica
tion as originally filed".
In respect of the disclaimer and its effect upon
the rights of the parties the Judicial Committee
said at page 133:
As regards the order of the 19th of March 1937, their
Lordships agree with the construction placed upon the Claims
by the Supreme Court; and they also agree with the Supreme
Court that, upon the footing of that construction, the Patent
has been anticipated by earlier Patents; with the result that, if
there had been no disclaimer, the Patent would be invalid and
void.
There remains, however, for consideration the fact of the
disclaimer, and its effect upon the rights of the parties in the
litigation, and on the present appeal.
The disclaimer is an unconditional disclaimer; it must neces
sarily be unconditional. The statute does not contemplate or
authorise a contingent disclaimer. As soon as the disclaimer
was filed and recorded in the office of the Commissioner, it was
made part of the Patent; the only existing Claims are the
Claims as amended by virtue of the disclaimer, and the only
invention protected by the Letters Patent is the invention a
description whereof is contained in the Specification as so
amended.
That same patent and royalties payable under a
licence agreement came before the Supreme Court
of Canada subsequently in Trubenizing Process
Corporation v. John Forsyth Ltd 5 . The Court held
that the covenant to pay royalties was an
independent covenant which remained operative
notwithstanding the adjudications that had been
made with respect to the patent, and Davis J.
(Duff C.J.C. and Hudson and Taschereau JJ.
concurring) said at page 130:
The respondent, while contending that it is not necessary to its
defence to rely upon the fact that the other patent was subse
quently declared invalid by this Court, whose order was merely
varied by the Judicial Committee to preserve the patent as it
now exists limited by the disclaimer recorded after the judg
ment in this Court, argues that its defence is fortified by the
declaration of invalidity of "the claims in the patent as made by
the patentee in the specification as originally filed," which was
the state of the patent at the date of the making of the license
agreement; and that it, the respondent, cannot under the license
agreement be adversely affected by the subsequent disclaimer.
But that does not give effect to the statutory provision of sec.
50(2) of The Patent Act above mentioned, which provides that
"The disclaimer shall thereafter be deemed to be part of the
original specification."
Notwithstanding the course of the disclaimer patent in the
earlier litigation, the respondent not only continued to pay the
royalties under the license agreement down to July 1937, but
continued, at least down to the time of the trial of this action,
to manufacture and sell shirts that fell within the specification
of the patent. Some 36,800 dozen shirts were made between
July 1937 and September 1940 (Case, p. 46). A disclaimer may
well save a patent for a licensee's enjoyment and protection.
The disclaimer in this case did not affect the invention as
disclosed by the specification; it merely limited the claims to
the invention.
It is apparent that in those two cases involving
disclaimers under section 50, the counterpart of
the present section 51, the Courts held that the
(1943-44) 3 Fox Pat. C. 123.
disclaimer, which was a disclaimer of something
less than a whole claim, was a valid disclaimer. I
realize that in those cases no question appears to
have been raised that a disclaimer, to be valid,
must be a disclaimer of a whole claim; however,
the minds of the Courts were construing the sec
tion, and if there was any thought that the dis
claimer was invalid because it did not disclaim a
whole claim, it seems to me probable that the
Courts would not have overlooked that point.
It is also pertinent to note that in AMP Incorpo
rated v. Hellerman Ltd. 6 , Lord Denning said, at
page 70:
In all the statutes relating to patents, the patentee has been
permitted, on certain conditions, to enter a "disclaimer" of part
of what he claims: and, so far as I can see, this has always been
interpreted so as to enable him to reduce the ambit of his
monopoly by limiting a wide claim (which covers two or more
ways of construction) to a particular claim (which covers only
one of those ways of construction).
Counsel for the plaintiff also referred to the fact
that prior to 1958 there could in the United States
be disclaimer of less that an entire claim, but that
now, under the present Patent Act there, the only
proper disclaimers are those of entire claims or of
terminal portions of the patent's term, as indicated
in Walker on Patents, para. 277. However, I will
not cite United States' cases, as the United States
statute differs in many respects from our statute,
although the statutory provisions of the Canadian
Act have been borrowed extensively from the
United States system.
Various provisions of the Patent Act have been
referred to by counsel, but I do not think it would
be helpful for me to give detailed consideration to
each of them at this time, although here I will say
that I think section 50, under the heading "REIS-
SUE OF PATENTS", and section 51, under the
heading "DISCLAIMERS" deal with different situa
tions, and each section provides a remedy in the
situation to which it applies to achieve a result of a
valid patent within the scheme of the Act.
6 [1962] R.P.C. 55.
The present practice of the Patent Office in
respect of disclaimers (as notified to the patent
profession by the notice, Exhibit "F", in February
1970, under which disclaimers are recorded only
when they disclaim complete claims) may have the
merit of simplicity and may also serve to distin
guish clearly between what is disclaimed and what
remains undisclaimed. The possibility that some
disclaimers sought to be filed may fail to make
that distinguishment affords an argument in
favour of the Commissioner's interpretation that
only complete claims may be disclaimed. But, in
my opinion, the practice that limits disclaimers to
complete claims is based upon a misinterpretation
of section 51. In my view a disclaimer under that
section must be a disclaimer of something that is
within the ambit of the monopoly and the scope of
the claim or claims in the patent, but it does not
necessarily, to be valid and recordable, have to be
a disclaimer of one or more of the complete claims.
In my opinion the limitation of disclaimers to
complete claims cannot properly be implied from
the ordinary grammatical sense of the words in
section 51 read in their context in the whole Act
and harmoniously with the general scheme and
object of the Act.
Consequently I think that in the present case the
Commissioner erred in refusing to record the dis
claimer on the sole ground that it does not dis
claim a complete claim, which was the only ground
advanced for such refusal prior to the commence
ment of this action.
The defence says that disclaimer of portions of
claims is not in the public interest because it is
subject to abuse. Of course the Act was enacted
with the public interest as one of its objects, even
its principal object, but if section 51, on a proper
interpretation, permits disclaimers of parts of
claims, the remedy for any abuse in the use of the
section is by way of amendment of the provision,
not by reading into it something that, properly
construed, it does not say.
The defence alleges that the plaintiff is seeking
to circumvent the time limit imposed by the
present section 50 of the Patent Act by recourse to
the disclaimer provisions of section 51. That alle
gation is not, in my view, supported by the record.
At the trial it was also submitted on behalf of
the Commissioner that it cannot be held, on the
evidence before the Commissioner and this Court,
that there was a "mistake" within the meaning of
section 51 in the sense that the patent, as issued,
failed to represent what the inventor truly intended
to claim, and therefore that the plaintiff is not
entitled to a mandamus in this action.
The disclaimer, Exhibit "C", states that the
specification was made too broad and there was
included as part of the invention a certain named
compound which, unknown to the patentee prior to
the issue of the patent, had been disclosed in a
German patent dated September 5, 1940; the
letter, Exhibit "B", which accompanied the dis
claimer, also asserted that it was learned after the
patent had issued that the said compound had
been disclosed in the 1940 German patent; and
counsel for the plaintiff submitted that there thus
was a "mistake" on the part of the patentee, as
explained to the Commissioner when the disclaim
er was lodged, and the Commissioner did not
question that there was such mistake but refused
on other grounds to record the disclaimer, and that
he should not now in this action be allowed to
question that there was a mistake.
It may be that a failure to discover a prior
disclosure is not within the section where the
patent which was issued accurately expressed the
patentee's intention with respect to the scope of
the claims 7 .
In the present case there is no reason to infer
that there was or is any bad faith on the part of
the plaintiff and I am disposed to find, and I do
find, that it was by "mistake, accident or inadvert
ence", within the meaning of those words as used
in section 51, that the patentee failed to discover
that the said compound now sought to be dis
claimed had been disclosed in the German patent
' See Farbwerke Hoechst Aktiengesellschaft v. Commission
er of Patents [1%6] S.C.R. 604, 615, a case respecting an
application for reissue of a patent under section 50.
and consequently claimed the said compound in its
specification for the Canadian patent.
The ground taken in the defence that there was
no "mistake" is not the ground on which the
Commissioner refused to record the disclaimer. I
do not say that the ground of mistake cannot be
taken in this action, but I think that the wider
issue, the one having the much greater significance
to the parties and to the patent profession, is the
issue of the interpretation of section 51 as to
whether a disclaimer must be a disclaimer of a
complete claim.
Counsel for the Commissioner argued that an
order for mandamus does not lie, as it cannot be
said that section 51 has imposed upon the Com
missioner a duty to record the disclaimer, the
performance or non-performance of which is not a
matter of discretion, and that notwithstanding the
use of the word "shall" it is clear from the context
that it was not the intention of Parliament to cast
upon the Commissioner an imperative duty to file
and record all documents purporting to be
disclaimers.
On that point counsel for the plaintiff submitted
that there is no provision for an appeal from the
Commissioner's refusal to record the disclaimer
and that mandamus is available to the plaintiff in
this Court under section 18 of the Federal Court
Act to require the Commissioner to comply with
section 51 of the Patent Act and perform his
ministerial duty to record the disclaimer, for he
does not have a discretion not to do so, or, even if
he has a discretion, he has no right to refuse to
record the disclaimer on a misinterpretation of
section 51 or by reason of irrelevant or extraneous
considerations.
In that respect I think that the Commissioner
has a duty to consider and determine whether a
document sought to be recorded under section 51
is in fact a disclaimer within the meaning of the
section, but if the document is such a disclaimer
and the conditions for its recording are met there
is, in my opinion, a public statutory duty on the
Commissioner to record it, and he has no discre
tion not to do so, and mandamus is an appropriate
remedy where the Commissioner in such a case
has refused to record the disclaimer by reason of
having acted on a wrong interpretation of section
51 and thereby failed to discharge the duty
imposed on him by the section.
Consequently, if there is jurisdiction in the Trial
Division to entertain this proceeding I would grant
the plaintiff's claim for mandamus. Whether the
Trial Division has such jurisdiction remains to be
decided.
Up to this point I have been dealing with the
merits of the case and the contentions of the
parties, except in respect of the question whether
this Court, the Trial Division, has jurisdiction to
entertain the proceeding. The relevant sections of
the Federal Court Act are sections 18 and 28,
which read in part as follows:
18. The Trial Division has exclusive original jurisdiction
(a) to issue an injunction, writ of certiorari, writ of prohibi
tion, writ of mandamus or writ of quo warranto, or grant
declaratory relief, against any federal board, commission or
other tribunal; and
(b) to hear and determine any application or other proceed
ing for relief in the nature of relief contemplated by para
graph (a), including any proceeding brought against the
Attorney General of Canada, to obtain relief against a
federal board, commission or other tribunal.
28. Notwithstanding section 18 or the provisions of any
other Act, the Court of Appeal has jurisdiction to hear and
determine an application to review and set aside a decision or
order, other than a decision or order of an administrative
nature not required by law to be made on a judicial or
quasi-judicial basis, made by or in the course of proceedings
before a federal board, commission or other tribunal, upon the
ground that the board, commission or tribunal
(a) failed to observe a principle of natural justice or other
wise acted beyond or refused to exercise its jurisdiction;
(b) erred in law in making its decision or order, whether or
not the error appears on the face of the record; or
(3) Where the Court of Appeal has jurisdiction under this
section to hear and determine an application to review and set
aside a decision or order, the Trial Division has no jurisdiction
to entertain any proceeding in respect of that decision or order.
It is not disputed that the Commissioner of
Patents is a "federal board, commission or other
tribunal", within the meaning of section 28 and as
defined in section 2 of the Federal Court Act.
It has recently been held by the Supreme Court
of Canada in Howarth v. National Parole Board'
that while by the general provisions of section 18
of that Act supervisory jurisdiction over federal
boards is conferred generally upon the Trial Divi
sion without any restriction as to the nature of the
decision under consideration, the new remedy
created by section 28 is restricted in its application
to judicial decisions or to administrative decisions
or orders required by law to be made on a judicial
or quasi-judicial basis; and that the new remedy of
section 28 is not available in respect of decisions of
an administrative nature not required by law to be
made on a judicial or quasi-judicial basis, but that
all the other remedies, all the common law reme
dies, remain unchanged by the Federal Court Act,
the only difference being that the jurisdiction is no
longer exercised by the superior courts of the
Provinces, but only by the Trial Division of the
Federal Court.
The question whether, when a disclaimer is
lodged under section 51 of the Patent Act, a
decision thereon to record it or to refuse to record
it, as the case may be, is a decision of an adminis
trative nature not required by law to be made on a
judicial or quasi-judicial basis, is fairly arguable.
However, I am of the view that it is not such a
decision but rather that it is a decision of an
administrative nature required by law to be made
on a judicial or quasi-judicial basis, and that the
Federal Court of Appeal has jurisdiction under
section 28 (1) of the Federal Court Act to hear and
determine an application to review and set aside,
on one or more of the grounds set forth in the
subsection, the Commissioner's decision to refuse
to record the disclaimer here in issue. But I have
not reached that conclusion without some doubt
that it is correct. In reaching that conclusion I
have taken into consideration the general scheme
of the Patent Act and the functions and duties of
the Commissioner and the fact that under section
51 he has to determine whether the proffered
document is in fact a disclaimer within the scope
a (1974) 18 C.C.C. (2d) 385 (Can.).
of the section, whether the conditions for its
recording have been met, and, I also think, wheth
er it definitely distinguishes the part of the inven
tion that is not disclaimed and is truly the inven
tion of the disclaimant from other parts thereof
claimed without right, for it seems to me that
subsection (5) would not provide that the patent,
after disclaimer, shall be deemed to be valid for
the part not disclaimed unless the disclaimer
makes that distinguishment. I think that the deter
mination of such questions, a determination which
can affect the legal right of the disclaimer, is far
from a mechanical or purely ministerial operation,
it requires the application of legal rules and objec
tive standards to the facts, as opposed to subjective
standards of policy or expediency or administrative
discretion, and in my view the Commissioner is
under an implied duty to act judicially in making a
decision in respect of a disclaimer proffered under
section 51.
Consequently it follows that I must find that
this Trial Division does not have jurisdiction to
entertain the present proceeding, and the relief
sought by way of mandamus will have to be
refused and the action will have to be dismissed.
As success on the issues argued has been divid
ed, costs will not be awarded against either party.
Pursuant to Rule 337(2)(b) of the Federal
Court Rules counsel may prepare a draft of an
appropriate judgment to implement the Court's
conclusions, and move for judgment accordingly.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.