IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application 428,420 having been rejected under Rule 47(2) of
the Patent Regulations, the Applicant asked that the Final Action of
the Examiner be reviewed. The rejection has consequently been con-
sidered by the Patent Appeal Board and by the Commissioner of Patents.
The findings of the Board and the ruling of the Commissioner are as
follows.
Agent for Applicant
Cowling & Henderson
Box 466, Terminal A,
Ottawa, Ontario
K1N 8S3
COMMISSIONER DECISION
Section 2: SOYBEAN VARIETY
A strain of soybean developed by known cross breeding and selection
techniques may be new and useful but the necessary attribute of
ingenuity is not present. Further, the subject matter does not fall
within the definition of invention under Section 2.
Final Action: Affirmed
Patent application 428,420 (Class 47-4), was filed on May 18, 1983 for an
invention entitled SOYBEAN VARIETY. The inventor is Clark W. Jennings.
The Examiner in charge of the application took a Final Action on April 3,
1984 refusing to allow it to proceed to patent. In reviewing the
rejection, the Patent Appeal Board held a Hearing at which the Applicant
was represented by Mr. D. Watson and Mr. E. McKhool. Also present were the
inventor Dr. C. Jennings, Mr. J. Cavanaugh of Pioneer U.S.A., and Mr. W.
Parks, President of Pioneer Canada.
The subject matter of this application relates to a strain of soybean
(Variety 0877) which has been developed by cross-breeding. Soybean Variety
0877 resulted from the cross (Clark X Chippawa 64) X Corsoy and provides
the following desirable characteristics:
- high oil content
- early maturity
- stable high yields
- resists seed shattering
- resists root rot caused by the fungus
phytophthora megasperma vat sojae
In the Final Action the Examiner refused the application for not falling
within the statutory definition of invention under Section 2 of the Patent
Act. That action stated (in part):
...
As was stated in the previous official action, the variety
of soybean plant disclosed and claimed in this application
does not fall within the statutory definition of invention
as given by Section 2 of the Patent Act.
In Section 2, "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
In the Manual of Patent Office Practice, Section 12.03.01(a), dealing
with non-statutory subject matter, it is stated:
Subject matter for a process for producing
a new genetic strain or variety of plant or
animal, or the product thereof, is not
patentable. This exclusion does not
include a micro-biological process or
product thereof.
The interpretation of "invention" as given in Section 2 has always
excluded new varieties of plants and seeds. Plants and seeds are
considered a unique category of creativity, so much so as to warrant
an entirely separate act to govern creative contributions of this
kind. In this connection, it should be noted that the U.S. has
separate regulations governing plant patents, and that Great Britain
does not permit this category of creativity to fall within its
definition of invention.
Applicant's argument that a patent for the new soybean plant should be
granted because the proposed Canadian plant Breeders Rights Act has
died on the order paper of parliament is noted but the argument is not
considered relevant.
In response to the Final Action the Applicant stated (in part):
This invention relates to a unique variety of soybean plant which has
been created by the hand of man by cross-breeding. It is submitted
that it has all the necessary attributes of patentable subject matter,
novelty, unobviousness and utility. Nevertheless, the Examiner has
rejected it on the sole ground that it does not comply with the
definition of "invention" in Section 2 of the Patent Act, as
interpreted by the Manual of Patent Office Practice, Section
12.03.01(a).
Although such statement in the Manual of Patent Office Practice may
bind the Examiner, it does not bind the Commissioner of Patents. It
is accordingly submitted that, for the reasons that will be developed,
there should be a re-evaluation of the statement in the Manual in the
light of the wording of the Patent Act and developments in the law.
At the Hearing Mr. Watson emphasized that under Section 42 of the Patent
Act the Commissioner of Patents must be satisfied that the Applicant is not
by law entitled to be granted a patent before he can refuse it. He said
that the requirements for patentability are novelty, utility, and
ingenuity, and if these are all present, the Commissioner has no authority
to deny the grant of a patent. He argued these attributes are present here
and that a patent should be granted. In support of his position he
referred to numerous judicial decisions, and to the Commissioner's decision
in the application of Abitibi Company 62 C.P.R. (2d) 81.
The issue before the Board is whether or not the application is directed to
patentable subject matter under Section 2 of the Patent Act. That Section
reads:
'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.
The claims are as follows:
1. A variety of soybean plant characterized by having the following
objective characteristics:
Seeds:
Shape Oblong
Surface Sometimes wrinkled
Seed Coat Color Medium yellow
Seed Coat Luster Shiny
Hilum Color Light gray
Weight 18-20 grams per 100 seeds
Cotyledon Color Yellow
and also, exhibiting longitudinal discoloration of the seed coat
stemming from the hilum, visible in the event that the plant has
experienced considerable environmental stress;
Leaves:
Color Medium green
Shape Ovate
Plant Pubescence Color Medium Gray
Plant Height 27-35 inches
Plant Type With intermediate canopy, i.e.,
intermediate between slender
and bushy
Plant Habit Indeterminate
Pods:
Color Brown
Set Scattered
Flower Color Purple
Hypocotyl Color Purple
Lodging Score 2.0 to 3.0, on a scale of 1-5
Maturity Group 0
said variety resembling the soybean variety Corsoy with
respect to plant shape, seedling pigmentation and leaf
characteristics, and the variety Portage with respect to
seed size, and the variety Altona with respect to seed
shape, and the variety Hardome with respect to color of
hilum; and is further characterized by being resistant to
the fungus Phytophthora megasperma var sojae (Races 1 and 2).
2. A pod of the soybean plant of claim 1.
3. A seed of the soybean plant of claim 1.
4. A variety of soybean plant of the genus Glycine,
species max, substantially as described in the
specification.
While the definition of invention in Section 2 of the Act is broad in its
wording, it has for a long time been recognized by the Canadian Courts that
they must interpret the Section carefully to give it some reasonable
boundaries. As Mr. Watson pointed out, there is great similarity in the
definitions of invention in Section 101 of the United States Patent Law and
Section 2 of the Canadian Patent Act. However, quite different
interpretations have been given to the two Sections in the two countries.
In the United States it has been said that Congress intended statutory
patentable subject matter to include "anything under the sun that is made
by man", here, the same broad interpretation has not been applied by
Canadian Courts. They have circumscribed the broad wording of Section 2 by
holdings that have excluded some subject matter areas and human activities
from patentability. The findings in the following Canadian cases are
illustrative of limitations to the meaning of Section 2.
In Lawson v Commissioner of Patents (1970) 62 C.P.R. at 109 the Court took
it as settled that all new and useful arts and manufactures are not
included within the definition of invention. Cattenach, J. quoted Thorson,
P. in Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning
v Commissioner (1962), 39 C.P.R. 105 at 124 as saying that if an art or
manufacture were
...new and useful it is an invention within the meaning of the
definition and, therefore, patentable under the Act...
Cattenach, J. then pointed out that
On appeal the view of Thorson, P., as above expressed
was repudiated by the Supreme Court of Canada...
and commented:
It is, therefore, clear that words of limitation must
be read into s. 2(d).
Mr. Cattanach went on to say that, even though the Board of Appeals in the
United States Patent Office accepted certain claims in the corresponding
United States application, he did not agree that the procedure of dividing
land was in the patentable area in Canada. In that case novelty and
utility could not save subject matter in an area deemed non-patentable.
In Commissioner of Patents v Farbwerke Hoechst Aktiengesellschaft Vormals
Meister Lucius & Bruning (1964) S.C.R. at 55 Judson J. said:
Following statements made in R. v Patents Appeal Tribunal,
Ex p. Swift & Co., the Exchequer Court said that the
Commissioner should not refuse to allow an application to
proceed to the grant of a patent unless he is quite
satisfied that the subject-matter of the application could
not conceivably be patented within the meaning of the
Patent Act.
The Commissioner was well within even this definition of
the scope of his duties but I think that the obiter of the
Exchequer Court expresses the duties of the Commissioner
too restrictively and fails to recognize the distinction
between the United Kingdom and the Canadian Patent Acts
...
... in Canada the Patent Office, supervised by the Court,
does examine as to inventiveness, and an applicant may
appeal to the highest court. Moreover, in the particular
class of case with which we are here concerned dealing
with drugs and medicines, there is considerable public
interest at stake, and the Commissioner should most
carefully scrutinize the application to see if it merits
the grant of monopoly privileges and to determine the
scope of the monopoly available.
Judson, J. in the above passage, was commenting with approval on the
long-standing Canadian practice of examining applications for the presence
of inventiveness (as opposed to novelty and utility only) even though
inventiveness is not a statutory condition in the Patent Act. He also
affirmed the Commissioner's duty to make determinations on the
patentability of an application when there is a perceived public interest
in the outcome. This, in our view, is not the same as merely applying the
broadest meaning that the wording of the Act will bear without any
consideration at all as to its implications, which appears to be what Mr.
Watson would have the Commissioner do in this case.
Another case pertaining to restrictions not found in Section 2 but applied
by the Court is Tennessee Eastman Co. v Commissioner of Patents 8 C.P.k.
(2d) 202 where Kerr J. said:
The method lies essentially in the professional field of
surgery and medical treatment of the human body, even
although it may be applied at times by persons not in that
field. Consequently, it is my conclusion that in the
present state of the patent law of Canada and the scope of
subject matter for patents, as indicated by authoritative
judgments that I have cited, the method is not an art or
process or an improvement of an art or process within the
meaning of s. 2(d) of the Patent Act.
(emphasis added)
Again, the questions of novelty and utility were not deciding factors, the
overriding concern was the subject matter itself, particularly, the
professional field of surgery and medical treatment of the human body.
In the more recent case of Schlumberger Canada Ltd. v. Commissioner of
Patents (1981) 56 C.P.R. 204 related to a computer program, Pratte, J.
said:
As to mental operations and processes it is clear in my
view that they are not the kind of processes that are
referred to in the definition of invention in s. 2.
In our view, the findings in these four cases show that the Canadian Courts
have not taken the very broad wording of Section 2 at face value. They
provide direction that restrictive meanings be given to Section 2, and that
the Commissioner has authority to assess the subject matter of an
application. Kerr, J. in Tennessee Eastman, supra, called this taking "the
present state of the patent law of Canada and the scope of subject matter
for patents, as indicated by authoritative judgments". In view of these
cases, 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.
Further support for this view may be found by referring to the Vanity Fair
case and the Monsanto case.
In Vanity Fair Silk Mills v Commissioner of Patents (1931) S.C.R. 245, a
case often cited by agents when they foresee an exercise of the
Commissioner's authority to make determinations under the Act, the Supreme
Court was, in fact, upholding a Commissioner's decision not to grant a
patent based on his determination of lack of inventiveness. Chief Justice
Duff, who wrote the decision, said:
No doubt the Commissioner of Patents ought not to refuse
an application for a patent unless it is clearly without
substantial foundation
and
In effect both the President of the Exchequer Court and
the Commissioner have held that.
In other words Duff, C.J. did not see any difficulty in upholding a refusal
by the Commissioner based on his determination concerning subject matter
sought to be patented. Clearly, therefore, the Commissioner is empowered
to determine between patentable and unpatentable subject matters.
In Monsanto Co. v Commissioner of Patents (1979) 42 CPR (2d) 161 the
Supreme Court iterated the remarks of Duff, C.J. in Vanity Fair and then
went on to explain that the objection of the majority was not that the
Commissioner had exercised discretion but the way in which he had exercised
it. The Court was concerned with the lack of reasons to justify the
Commissioner's refusal to grant, and said it appeared that the Commissioner
was demanding the Applicant justify a grant, but the Court did not say that
the Commissioner had no authority to refuse to grant based on his
understanding of the issues. Consequently we do not see how Monsanto would
help Mr. Watson's argument.
All the cases we have mentioned demonstrate that there has been and
continues to be a considerable difference in the practical application of
the definition of a patentable invention according to the Canadian Patent
Act and the United States patent law. Further, they show that it is within
the Commissioner's jurisdiction to make patentability determinations.
Otherwise the Commissioner would be in a position of never having to decide
on the patentability of subject matter unless that particular subject
matter had already been excluded by the Courts. We think the Patent Act
was not meant to be administered in that way and we disagree with this line
of argument advanced by Mr. Watson.
The subject matter of this application is a strain of soybean. The claims
are directed to the soybean plant, a pod, and a seed of the variety
described; so there is no doubt that a type of living matter is being
claimed. Mr. Watson in discussing the Commissioner's Decision in Abitibi,
supra, points out the subject matter in that application was concerned with
living matter, namely a mixed fungal yeast culture that was acclimatized to
spent sulphite liquor and it was rejected by the examiner for that reason.
He believes the following passage from Abitibi is helpful to his argument:
It is of some importance, we think, to recognize how far
our recommendation, if accepted, will carry us, and we
believe clear guidelines should be set down for the
benefit both of applicants and examiners. Certainly
this decision will extend to all micro-organisms,
yeasts, moulds, fungi, bacteria, actiomycetes,
unicellular algae, cell lines, viruses or protozoa; in
fact to all new life forms which are produced en masse
as chemical compounds are prepared, and are formed in
such large numbers that any measurable quantity will
possess uniform properties and characteristics.
(our emphasis)
In assessing Mr. Watson's argument we find it useful to consider a
subsequent passage appearing in Abitibi a few lines after the above, as
follows:
We can see no justifiable reason for distinguishing
between these life forms when deciding the question of
patentable subject matter. Whether it reaches up to
higher life forms - Plants (in the popular sense) or
animals - is more debatable.
(our emphasis)
We understand from the first passage that the animate matter in question
was being discussed in terms of characteristics normally associated with
inamimate matter, for example, uniformity of structure, and properties in
the mass. We learn from the second passage, the question of considering
higher forms where the properties of individual entities become more
important and more complex relative to the mass, was left open.
Another passage from Abitibi quoted by Mr. Watson at the hearing was the
following:
We can no longer be satisfied that at law a patent for a
micro-organism or other life forms would not be held
allowable by our own courts. Since that is the
criterion set down in Section 42, without which an
application should not be refused, we recommend that the
rejection of claims 4 and 5 be withdrawn.
We have no doubt that the Commissioner's Decision in Abitibi applies to
micro-organisms and lower life forms produced en masse, however, that is
not the subject matter now under review. We believe Applicant's subject
matter, a variety of soybean, should be considered on its own merits in
view of the above Canadian cases, rather than by attempting to relate the
comments made with respect to an application concerned with micro-
organisms.
In the United States, the legislature has implemented two laws whereby
plant breeders are afforded protection, namely the Plant Patent Law of 1930
and the Plant Variety Protection Act of 1970. The United States
legislature may have considered these two further laws, directed towards
plants and seeds, were necessary to afford a certain kind of protection in
those areas. In Canada however, in contrast, Parliament has not enacted
legislation similar to either the Plant Patent Law or the Plant Variety
Protection Act and, to date, all proposals that similar laws be enacted
have not resulted in legislation.
Absent any indication in Canada by the Courts, or by legislation that the
public policy is to provide protection for strains of soybeans, the comment
by Mr. Justice Judson in the Farbwerke case, supra, becomes significant,
"... the Commissioner should most carefully scrutinize the application to
see if it merits monopoly privileges" under the Canadian Patent Act.
We find no direction from the Canadian Courts that a plant growing
according to the laws of nature, should be considered a manufacture that
may be acceptable under Section 2. We are not informed in the application
of any change on growth that is due to changing the effects of inherent
natural forces resident in a soybean. Apropos the skills of persons
involved in developing soybean varieties, we refer to the test book
SOYBEANS AND SOYBEAN PRODUCTS Vol. 1, 1950 Interscience Publishers, Inc.
New York. We learn from page 19 that between 1898 and 1950 the U.S. Dept.
of Agriculture has imported more than 10,000 varieties of soybean from
various countries throughout the world. Paragraph 3 of that page reads:
Most of the acreage devoted to soybeans was first used
for forage and pasture; therefore the early breeding
was blended largely toward the development of varieties
most suitable for hay, silage, soilage, and pasture.
The expansion in the use of soybeans for processing into
oil and meal in the early 1920's led to a demand by
growers and processors for yellow-seeded varieties
having a high oil content and a high seed-yielding
character. Agronomists and plant breeders of state
experiment stations and the United States Department of
Agriculture developed, through selection and
hybridization of introductions and standard varieties,
marry improved varieties. These new varieties with a
much higher oil content and better yields of seed have
practically displaced all of the old standard types and
extended the area over which soybeans were previously
grown.
Clearly then the number of varieties that have been developed through the
cross breeding and selection technique must number many thousands in the
United States alone. As indicated in the above reproduced paragraph the
purpose of developing new varieties is to obtain improved characteristics
(high oil content, high seed-yielding character). We agree that the
descendent plant may be new and useful but we do not see the attribute of
ingenuity in the patentable sense has been demonstrated. We are persuaded
however, that Applicant has used the professional skills practiced by a
person in the art, for example, following the skills of a plant breeder
that have been exercised in the past in obtaining the thousands of strains
of soybeans mentioned in the book. We are satisfied there is no direction
provided by the cases discussed during the prosecution and the Hearing,
particularly the Tennessee Eastman case, that this kind of subject matter
should receive patent protection.
Subsequent to the Hearing, Applicant submitted a copy of the Ex part e
Hibberd decision of the United States Board of Appeals dated September 18,
1985. He pointed out that it is in conformity with the interpretation
provided by the United States Supreme Court decision, Diamond v.
Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980) and provides persuasive
reasoning why this application should issue to patent. With respect to
Applicant's position we do not agree that either of these cases advances
reasons that alter the direction provided by the Canadian jurisprudence we
have outlined herein.
In summary, as may be seen from the Canadian cases discussed above, the
Courts have indicated, in ruling on appeals to them from refusals by the
Commissioner of Patents to allow certain subjects matter, that there are
limitations in Canada to the types of endeavor worked by humankind that may
receive patent protection. The Courts have further provided direction that
it is within the Commissioner's authority to determine whether subject
matter does or does not fall into a patentable category, and moreover, to
refuse to grant a patent when the attributes of patentability are not
present.
We consider that this application is not directed to patentable subject
matter within the definition of Section 2 of the Patent Act in view of the
direction provided by Canadian jurisprudence. We recommend the rejection
of the application should be affirmed.
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. I am satisfied this application is not directed to statutory
subject matter. Accordingly, under Section 42 of the Act I refuse to grant
a patent on this application. The Applicant has six months within which to
appeal my decision.
J.H.A Gari‚py
Commissioner of Patents:
Dated at Hull, Quebec
this 4th day of March 1986
Gowling & Henderson
Box 466, Terminal A
Ottawa, Ontario
K1N 8S3