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1929 Supreme(SC) 73
Privy Council At Canada
Lord Warrigtion of Clyffe, Viscount Dunedin , Justice Lord Buckmaster, JJ.
Canadian General Electric Co. Ltd. -Appellant
Versus
Fada Radio Ltd. -Resopndent
Privy Council Appeal No. 74 of 1928
Decided On : 15-10-1929
Important Points
Subject
Intellectual Property Law - Patent Law
Act Referred
Headnote
(B) Patent Law - Subject Matter - There must be a substantial exercise of inventive power or genius, though it may be slight. A new combination of well-known devices, and the application thereof to a new and useful purpose, producing a more efficient result, constitutes sufficient subject matter for a patent.
(C) Anticipation - Prior Publication - For a prior publication to anticipate a patent, it must contain clear and unmistakable directions to use the apparatus for the same practical utility. The determination of anticipation is a question of construction of the document; parol evidence is admissible only to explain technical terms or symbols of art and relevant surrounding circumstances, not to reveal the subjective intention of the authors.
(D) Act of 1921 - Section 7(1) - Retroactive Effect - A patent granted on an application filed within the specified statutory period cannot be held invalid by reason of a foreign patent, printed publication, or public use or sale prior to the filing, unless such occurred before 1st August 1913. Consequently, a false declaration regarding the existence of a foreign patent becomes an immaterial allegation if the Act renders the foreign patent irrelevant to the validity of the patent.
Facts of the case:
An action for infringement of a patent relating to wireless telephony, specifically for increasing selectivity in receiving apparatus using a plurality of resonant circuits arranged in cascade. The validity of the patent was challenged on grounds of lack of subject matter, lack of utility, anticipation by a foreign patent specification, and prior knowledge or use by others. Furthermore, it was contended that the patent was void because the applicant had falsely declared that the invention had not been patented in any other country, whereas a patent had been obtained in a foreign jurisdiction more than a year prior to the local application.
Findings of Court:
The court found that the assembly of instrumentalities to provide selectivity while preserving signal strength displayed sufficient invention. The foreign patent specification did not anticipate the invention as it lacked clear directions for the specific tuned input circuit. Regarding prior use, the evidence showed the invention was discovered in January 1913, preceding the discovery by others in February 1913. The Act of 1921 retroactively cured the invalidity arising from the foreign patent, rendering the false declaration immaterial.
Issues: Whether the patent lacked sufficient subject matter; whether it was anticipated by a prior foreign patent specification; whether the invention was known or used by others before the claimant's invention; and whether a false declaration regarding a foreign patent rendered the patent void under the law.
Ratio Decidendi: A small but forward step in combining known devices to produce an advantageous result is sufficient to support a patent's subject matter. Anticipation is decided by the true construction of the prior publication, not by the authors' intentions or external blueprints. The term "invention" in the context of prior use refers to the description, whether spoken or written, which provides the means of making the desired thing. Retroactive legislation can render previously material misstatements immaterial if the underlying fact no longer affects the validity of the patent.
Result: Appeal allowed.
Legal Category Hierarchy
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intellectual property
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patent law
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validity
- subject matter
- anticipation
- prior use
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formalities
- declarations
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validity
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patent law
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practice and procedure
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evidence
- admissibility
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evidence
Lawrence Jones and Co., Redden, Blake, W.T. Watson, W.D. Herridge , J.C. Mac Farlane, R.S. Smart, R.S. Cripps
Lord Warrington of Clyffe, J.:-
The action in which the present appeal arises is one for the infringement of the Canadian Patent No. 208,583, the application for which was made on 17th September 1920. The application was made by the inventor, Ernest Alexanderson. The Patent was dated 15th February 1921, and was granted to the present appellants as assignees of Alexanderson.
That the patent was infringed by the respondents is admitted, but they dispute its validity on several grounds, including those hereinafter specifically mentioned.
The trial Judge Maclean in the Exchequer Court of Canada held that none of the grounds of defence was established, and on 14th April 1927, he pronounced a decree whereby it was declared and adjudged that the patent was valid and that it had bad been infringed by the respondents, and an injunction with ancillary relief, including an enquiry as to damages, was granted.
The respondents appealed to the Supreme Court of Canada, who on 7th February 1928, made an order allowing the appeal, reversing the judgment of the Exchequer Court, and dismissing the action with costs.
The present appeal is brought by special leave of His Majesty in Council granted by Order in Council dated 30th July 1928.
Among the grounds of defence raised by the respondents it is necessary to mention the following only, viz., (1) lack of subject matter having regard to the state of the art as shown by earlier patent specifications; (2) lack of utility; (3) anticipation by a specification of a German patent granted on 23ed June 1919 to Schloemilch and Von Bronk on an application made on 9-02-1913. The specification, however, remained unpublished until the grant of the patent; (4) A defence founded on S. 7, Patent Act of 1906, which provides that the invention claimed shall be one which amongst other things, "was not known or used by any other person before the claimant's invention thereof."
A further defence was raised founded on the fact that Alexanderson's declaration in support of his application stated contrary to the fact that he had not applied for or obtained a patent for the invention in a foreign country.
It will be convenient to deal with these defences in order, except that No. 2 (want of utility) may be disposed of at once, inasmuch as it was not seriously pressed before the Board.
The patent relates to wireless telegraphy, or rather, to wireless telephony, and in particular to the selection in a receiving apparatus of oscillations of a given wave-length from mixed oscillations. This quality of a receiving apparatus is conveniently referred to as "selectivity.” Speaking generally, the object of the inventor was to increase the selectivity of the apparatus and at the same time to avoid loss of strength in the selected oscillations.
The chief elements in a radio receiving apparatus,' their functions and operation, are so fully described by Maclean, J. in his judgment (Record, pp. 390-391), that it is unnecessary to repeat them. It is sufficient to say that at a receiving station it is necessary to eliminate from the infinite number of waves reaching the antennae or aerial all except those of the desired wave-length, and that this is achieved by the use of a tuned circuit containing a condenser. The condenser contains two sets of plates, one of which may he made moveable or variable with respect to the other, thus varying the capacity of the condenser and adjusting the resonant frequency so as to correspond to the frequency of the desired wave. A variable condenser is conventionally distinguished in drawings of an apparatus by an arrow drawn through the lines representing the condenser. Another conventional sign is an arrowhead pointing to the secondary of the induction coil. This indicates that the number of turns of the coil may be changed, thus varying the inductance or the voltage of the induction circuit, and as a consequence the resonant frequency thereof.
It will be convenient, in the first instance, to deal with the two ques
