COMMISSIONER' S DECISION
SECTION 28(1)(a) TELEVISION RECEIVERS
The application filed on July 5, 1953 contains claims 8 to 16 nearly
identical to claims in Canadian Patent 577,734 which was filed on
September 3, 1954 and expired in 1976. There is no provision in the
Patent Act to refuse the application where two applications are pending
where one issues to patent and expires while the other is still pending.
Final Action Reversed.
***************
This decision deals with Applicant s request for review by the Commissioner
of Patents of the Final Action on application Serial Number 650,290 (Class
350-67) assigned to Radio Corporation Of America. The application, which
was filed on July 3, 1953 by the inventors Dalton Harold Pritchard and
Alfred Christian Schroeder, is entitled SYNCHRONOUS DETECTORS FOR TELEVISION
RECEIVERS. The Examiner issued a Final Action refusing to allow the applica-
t ion .
This application relates to improvements in synchronous detectors employed
in color television receivers. In the course of a long and complicated
prosecution the applicant introduced the subject matter of present claims
8 to 16 into the application on October 17, 1961. The examiner in charge of
the application in May, 1964 rejected these claims in view of Canadian Patent
577,734, granted on June 16, 1959 to Farr. The application contains claims 8
to 16 which are identical or nearly identical to claims in the patent. At
that time, Applicant pointed out that the Farr patent had been copending before
the Patent Office with this application and indicated these claims must be
allowed on the basis of in re Fry 1 C.P.R. 135. The examiner made no
further comment on the in re Fry situation, and the prosecution of the
application was continued through protracted conflict proceedings which were
resolved in 1982. The Farr patent expired in 1976. The examiner now in
charge of the application has again rejected claims 8 to 16 of this application
in view of the Farr patent. He takes the position that the decision in
re Fry is no longer pertinent because the Farr patent has expired. In his
view therefore, the subject matter of Applicant's claims 8 to 16 has been in
the public domain since 1976, and cannot now be patented .
In response to the examiner's Final Action the Applicant presents reasons
for allowance of his claims as follows (in part):
...
The Farr patent issued on an application which was filed
September 3, 1954, claiming a United States priority date
of September 4, 1953. The present application was filed
on July 3, 1953, and is entitled to a United States prior-
ity date of July 25, 1952. Farr's filing date and his
priority date are both later than the filing date of this
application in the Canadian Patent Office. There is no
basis upon which the Farr patent can be a reference
against the present application.
...
The examiner based his final rejection of claims 8 to 16 on
the stated ground that, the Farr patent having expired on
June 16, 1976, the subject matter of the rejected claims
is now in the public domain. He stated "This rejection is
based on the well known principle of patent law that when
an invention once becomes part of the public domain then
the public cannot be deprived of its right to use what it
already possesses, for there is, and can be, no consideration
to support such a monopoly". No authority is given for the
proposition. No authority exists for it.
The law relating to the granting of patents is the Patent Act.l
It sets out very clearly in what circumstances and to whom
the Commissioner is to grant a patent (Sections 28 and 29).
The Commissioner may refuse to grant a patent only upon being
"satisfied that the applicant is not by law entitled to be
granted a patent"2 (Sect ion 42) .
In order properly to refuse a patent, the Commissioner must
come to his conclusion on the basis of some provision of the
Patent Act not having been complied with in respect to the
application which is before him.
The rejection by the examiner has no basis at all in the Patent
Act . There is no law to support it . It thus cannot form the
basis for a conclusion by the Commissioner that the applicant
"is not by law entitled to a patent" in respect to claims 8-16
of the present application.
...
1Commissioner of Patent s v. Farbwerke Hoechst
Aktiengesellschaft Vormals Meister Lucius &
Bruning, (1964) S.C.R. 49, per Judzon J. at page
57 -- "An inventor gets his patent according to
the terms of the Patent Act, no more and no less."
2Monsanto Co. v. Commissioner of Patents, (1979)
42 C.P.R. (2d) 161, at page 178 where, after setting
out the text of Section 42, Pigeon J. said "I have
emphasized by law to stress that this is not a
matter of discretion: the Commissioner is to justify
any refusal".
...
The issue before the Board is whether or not claims 8 to 16 may be rejected
on the ground that the subject matter therein has become part of the public
domain.
When the Farr patent was first cited, in May 1964, Applicant's response was
satisfactory. We have no reason to doubt that if the application had been
otherwise allowable at that time, it eventually would have issued, taking
into consideration the comments by the Applicant concerning in re Fry.
We must now determine if the practical effect of the Fry decision lapses
with the expiry of the cited patent and if the Farr patent, although not
a proper citation in 1964, has now become a proper citation and provides a
good reason to refuse to grant a patent containing claims 8 to 16.
In addition to the two court cases mentioned by the applicant we would also
like to refer to the case of Vanity Fair Silk Mills v. Commissioner of Patents
(1939 S.C.R. 245) where it was said:
No doubt the Commissioner of Patents ought not to
refuse an application for a patent unless it is clear-
ly without substantial foundation.
It is therefore clear to the Board that, however reluctant the Commissioner
of Patents may be to grant a second patent for a second term of 17 years for
an invention that has been previously patented, he must do so unless he can
find, within the terms of the Patent Act, reasons that satisfy him that the
applicant is not entitled to the grant.
In seeking guidance from the Patent Act, the Board reviewed Sections 28, 43
and 63 in particular, because these are the sections which must be satisfied
with respect to novelty, entitlement to a grant, and previous grants for
the same invention.
In Section 28 there are various provisions outlined in subsections (1), (2)
and (3), which an Applicant must satisfy. In our view, subsections (2) and
(3) are not pertinent to the review of this application. Subsection (1)
sets out provisions concerning availability of the invention which exists
prior to filing an application. It also refers to the date the application
was filed, and does not refer to a later time, for example, during its pend-
ency. We find nothing in Section 28 that may be used as a ground for refus-
al of Applicant's claims 8 to 16 in view of the Farr patent which issued
after the filing date of this application.
Section 43 relates to the situation where a patent exists "before the filing
of an application." This is not the situation here, therefore Section 43
does not apply.
In Section 63 (1) , sub-paragraphs (a) , (b) and (c ) refer also to conditions
which exist before the filing of an application. In particular, sub-paragraph
(b) refers to a person who filed an application before the issue of a patent,
and it also provides the means for that person to bring an action before the
Federal Court to determine which of two patentees claiming the same invention
is the prior inventor.
Section 63(2) provides the Commissioner with the authority to refuse to grant
a second patent when a patent has already issued in Canada for the same in-
vention. The in re Fry case, decided by the Exchequer Court, now the Federal
Court, reviewed the term "already issued".
In that case, two applications were co-pending, and one issued to patent.
The Commissioner refused the other application in view of that patent, citing
Section 61(2). The Court found that the provisions of that Section applied
where an application for a patent was actually filed after a patent had issued for
the same invention. By its ruling, the Court brought to that section an
interpretation to the wording "already issued", which is still included in
Section 63(2), briefly stated, that an application should be refused where
the Canadian patent issued prior to the filing of the application.
In the case of RCA v Philco, 29 Fox Pat. C., 97, Jackett, J. made certain
observations about the in re Fry decision, to the effect that he thought
that the reference in Section 63(2) to a patent already issued, related
to the time when the Commissioner was considering the provisions of that
section. The Supreme Court in reviewing that case was silent with respect
to those observations.We are unable therefore to attach any significance
to the remarks by Jackett, J. in RCA v Philco, and we are bound to follow the
interpretation given in re Fry which is directly related to the conditions
found in Section 63 (2).
In a recent Federal Court case, Farbwerke Hoechst v Halocarbon, dated July 25,
1983, Collier J. remarked that "...the plaintiff's patent has now expired,
so that issue becomes academic." That remark however was made with respect
to the determination of injunctive relief in that case. While that patent
has expired and is in the public domain, we must recognize that the remarks
were directed to a particular issue which in our view is not related to the
provisions of Section 63(2).
In summary, the review of the prosecution emphasizes that the provisions of
the Patent Act are directed to a first to invent system. When there are two
co-pending applications disclosing or claiming the same subject matter, and
the later filed application issues to patent, as is the situation before us,
we are satisfied that the Act provides no direction to the Commissioner to
refuse the other application. Even though the Farr patent has expired and
has become part of the public domain, we are satisfied that Applicant, by law,
may not be denied the right to a grant of a patent containing claims 8 to
16, particularly considering the provisions of Section 28(1)(a) of the Act.
We recommend that the rejection of claims 8 to 16 be withdrawn and the applic-
ation be returned to the examiner for normal prosecution.
M.G. Brown S.D. Kot
Acting Chairman Member
Patent Appeal Board
I concur with the findings and the recommendation of the Patent Appeal
Board. Accordingly, I withdraw the rejection of claims 8 to 16, and I
remand the application to the Examiner for prosecution consistent with
the recommendation.
J H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 27th. day of January, 1984
Agent for Applicant
Smart & Biggar
P.O. Box 2999, Station D
Ottawa, Ontario