COMMISSIONER'S DECISION
REISSUE Agricultural Fungicidal Composition
Rejection based on intention and different invention. Claims 1 to 19
of the Patent represent one aspect of the invention, an agricultural
fungicidal composition. Compounds claims 20 to 40 sought by reissue
represent another aspect that is narrower than and included within
the breath of the compound that forms the active ingredient in the
composition claims. Final Action Reversed.
Patent Application 371,218 (Class 260-253) was filed on February 18, 1981 for an
invention entitled Agricultural Fungicidal Compositions. The applicant is
Sankyo Company Limited and UBE Industries Ltd. The Examiner in charge of the
application took a Final Action on April 19, 1982 refusing to allow it to
proceed to patent.
This is a reissue application of Canadian Patent 1,086,642. The reason for the
reissue is to add compound claims 20 to 40.
A Hearing was originally requested and was subsequently cancelled by the
applicant in a letter dated October 25, 1984.
The subject matter of this application relates to agricultural fungicidal
compositions containing as an active ingredient one or more of 4-amino-
quinizoline derivatives. These compositions show a controlling effect against
blast, brown spot, sheath blight and bacterial leaf blight of rice plants, late
and early blight of tomatoes; and anthracnose, downy mildew and powdery mildew
of cucumbers. They also exhibit insecticidal and acaricidal properties.
In the Final Action the Examiner refused the application for reissue because of
failure to satisfy Section 50 of the Patent Act. That action stated (in part):
....The refusal of this application is maintained.
The basic reasons for the rejection are that:
a) applicants do not meet the test of intention as set out
by the tribunals
b) The claims sought to be added constitute an invention
different from that defined by the claims of the
patent.
The policy governing the present situation is outlined
in M.O.P.O.P., chapter 14.01 as follows: "A reissue must
be confined to that invention which was completely
conceived and formulated by the inventor before the
application for the original patent was filed, and to that
invention which the patentee attempted to describe and
claim in his original application but which, owing to error
arising from inadvertence, accident or mistake, he failed
to do perfectly. Whenever a reissue contains claims that
are broader than the claims in the original patent, they
must be directed to what the patentee was attempting to
protect in the original patent". Therefore, matter shown
in the original specification but not recognized therein as
inventive and not claimed cannot be subject-matter for
reissue claims.
The judgement in Northern Electric v. Photo-Sound, Ex.C.R.
1936 at page 89, supports the above position in these
words: "The purpose of a reissue is to amend an imperfect
patent, defects of statement or drawings and not subject-
matter, so that it may disclose and protect the patentable
subject-matter which was the purpose of that patent to
secure to its inventor. Therefore the reissue patent must
be confined to the invention which the patentee attempted
to describe and claim in his original specification, but
which, owing to "inadvertence, error or mistake, he failed
to do perfectly; he is not to be granted a new patent but
an amended patent. It logically follows of course, that no
patent is "defective or inoperative", within the meaning of
the Act, by reason of its failure to describe and claim
subject-matter outside the limits of that invention, as
conceived or perceived by the inventor, at the time of his
invention...."
....In other words "It is not enough that an invention
might have been claimed in the original patent because it
was suggested or indicated in the specification. It must
appear from the document that what is covered by the
reissue application was intended to have been covered and
secured by the original".
In the present application the claims do not form a unitary
subject-matter. The discovery of new use for known
compounds is distinct from the synthesis of new chemical
substances and such distinct matters are not allowable in
the same application. The guidelines of the above cited
jurisprudence and the ensuing policy spelled in chapter
14:01 of M.O.P.O.P. apply clearly to this application....
In response to the Final Action the applicant stated (in part):
....It is submitted that here no reference is made to the
application as filed. Reference is only made to the issued
patent. Clearly therefore, the tribunals in order to limit
the use of Section 50(1), to what the applicants had
intended to claim at the time of filing the application,
must set this out in clear and unequivocal broad terms and,
it is submitted that the tribunals have not so done and, in
fact, the decisions of our Courts would support a position
that provided the invention being claimed in the reissue
application was conceived by the inventor before the filing
of the application and, provided that the claims are
supported by the disclosure of the specification, the
reissue is a valid one.
It is respectfully submitted that none of the jurisprudence
referred to by the Examiner, or the parts of the Manual of
Patent Office Practice (M.O.P.O.P.) referred to by the
Examiner, provide any basis for rejecting Claims 20 to 40
of this application, directed to the compounds per se....
....The other point raised by the Examiner is that the
claims sought to be added, constitute an invention
different from that defined by the claims of the patent.
In this direction the Examiner refers to the case of Fuso
Electro v. C.G.E., 1940 S.C.R., at page 385, where the
specification of the reissue application was the same as
the original patent and, the assertions are made by Kerwin
J. that the reissued must be confined to the invention that
the inventor attempted to describe and claim in the
original patent. Again, it is noted that reference is made
to the original patent and not the original specification.
Clearly, the inventor must have attempted to describe the
invention in the specification and he must have attempted
to claim it in the original patent and, this is precisely
the situation in this application. The invention is fully
described in the original specification and, before
issuance of the patent the applicant intended to claim the
invention now being claimed. It is respectfully submitted
that the invention now being claimed is not a different
invention from the invention claimed in the original
application, it is the same invention claimed more broadly
than the original application, in that the applicants are
eliminating from the claims to the compositions comprising
the novel compounds, the fungicidal carrier, as they are
entitled to such broader claims....
....The reissue application is not concerned with these old
compounds, it is concerned with the novel compounds, and
certainly, Section 50, sub-Section 3, allows for separate
reissue applications to be filed for distinct and separate
parts of an invention patented. Further, it is always open
to the applicants to cancel the composition claims.
However, the Examiner has not got into this area in his
examination, he has from the start simply rejected the
reissue application.
In summary therefore, it is respectfully submitted to the
Commissioner that the invention now being claimed in the
reissue application was made, conceived and perceived by
the inventors and applicants before the filing of the
original Canadian Application No. 304,843. That Canadian
Patent No. 1,086,642 which issued upon the application, did
not represent the applicant's intentions at the time of
filing or, at the time of issuance of the patent with
regard to the invention he wished to claim. That the
critical time for the intention of the applicant is the
time of issue of the patent, and not the time of filing the
application. The applicant would have been entitled,
during the prosecution of the application, to add Claims 20
to 40 of the reissue application to the original
application and he failed to do so by inadvertence,
accident or mistake, as is evidenced by the petition.
Applicants also submit that the invention of the reissue
application is the same as the invention perceived and
conceived by the applicants before the filing of the
original application, and applicants further point out that
the specification of the original application fully
supports the claims....
In the petition for reissue the applicant in parts 3 to 5 makes the following
statements:
(3) THAT the respects in which the patent is deemed defective or
inoperative are as follow:-
THAT claims to the 4-amino quinazoline derivatives per se, having
the formula:
(see formula I)
wherein:
A and B each represents a hydrogen atom;
X represents an alkylene group;
Y represents an oxygen atom or a sulfur atom; and
Z represents an unsubstituted phenyl group or a phenyl
group substituted with 1 to 3 substituents which are the same or
different and selected from the group consisting of a lower alkyl
group, a lower alkoxy group, a lower alkylthio group, a phenyl group,
a trifluoromethyl group and a halogen atom or salts thereof as novel
and inventive compounds are not asserted in the patent.
(4) THAT the error arose from inadvertence, accident or mistake,
without any fraudulent or deceptive intention in the following
manner:-
THAT at the time of filing Application No. 304,843 on June 6,
1978, from which Patent No. 1,086,642 issued, the applicants had been
aware of the fact that certain of the compounds, namely, compounds
numbers 1, 2, 91 and 92 as disclosed in the specification of Canadian
Patent No. 1,086,642 were known compounds having been published in
German Offenlegungsschrift No. 2,106,510 on August 26, 1971, and
further, that at the date of filing the application the claims to the
use of the compounds of the formula set out in Paragraph 3 as
agricultural fungicides, namely, the claims to the agricultural
fungicidal compositions and their use, were adequate for the
protection of the invention on the basis of the applicant's biological
evaluation of the compounds. However, on further biological
evaluation of the compounds, after the filing of the Application
304,843, they realized that the claims to the agricultural fungicidal
use of the compounds, as in the application as filed, was inadequate
for the protection of the invention. It was their intention to file
claims to the novel compounds set out in Paragraph 3, as these claims
became important to the applicants and, claims to the compounds set
out in Paragraph 3 were introduced into the corresponding South
African application which was filed on the same date as the Canadian
application. These claims to the compounds per se were filed on or
about November 8, 1978 at the South African patent has issued such
claims.
(5) THAT the knowledge of the new facts in the light of which the new
claims have been framed, was obtained by Your Petitioner on or about
September 25, 1979, in the following manner, namely, that subsequent
to the discovery, by the applicant's Japanese attorneys, that the
product claims were not present in the application which was shortly
to issue to patent and, after consultation with the applicants, the
Japanese attorneys instructed their Canadian agents of record, by
telex, to insert the product claims in the Canadian application.
However, on receipt of the instructions from their Japanese attorneys,
the Canadian agents of record ascertained that the application was in
issue and it was thus impossible to insert the claims to the compounds
per se into the Canadian Application before issue, although it was the
applicants intention to do so, on September 30, 1980.
There are forty claims in the application of which claims 1 to 19 are identical
to those in the original patent. These claims are directed to composition and
method of use. Claims added in the reissue application relate to the compound
of which claim 20 reads as follows:
A compound having the formula
(see formula I)
wherein: A and B each represents a hydrogen atom; X
represents an alkylene group; Y represents an oxygen atom
or a sulfur atom; and Z represents an unsubstituted phenyl
group or a phenyl group substituted with 1 to 3 sub-
stituents which are the same or different and selected from
the group consisting of a lower alkyl group, a lower alkoxy
group, a lower alkylthio group, a phenyl group, a
trifluoromethyl group and a halogen atom; or a salt
thereof.
One of the basic reasons for rejection of the application set out in the Final
Action is that the "applicants do not meet the test of intention as set out by
the tribunals". In support of this position the examiner quoted from M.O.P.O.P.
chapter 14.01 and the judgement in Northern Electric v. Photo-Sound Ex.C.R. 1936
@ 89.
We note that the disclosure of the reissue application is identical to the
disclosure of patent 1,086,642. The compounds of claims 20 to 40 are disclosed
as is the exemplification of preparation of specific compounds and detailing
physical data. In response to the Final Action the applicant argues that "it is
manifestly clear from the specification as filed, that the invention, as set
forth in claims 20 to 40 was clearly conceived and perceived by the applicants
before the filing of Application No. 304,843." We agree that the applicant
conceived and disclosed the compounds in his original application.
Looking at M.O.P.O.P. 14:01 we find that a reissue must be confined to "that
invention Which was completely conceived and formulated by the inventor before
the application for the original patent was filed." There is no question that
the applicant does comply with this requirement. From Northern Electric we note
that Justice McLean stated that "I think it is quite plain that the reissue
patent is not confined to the invention which Arnold described in his original
specification; there is introduced additional descriptive matter, new subject
matter, many of the claims in the reissue are based on the new subject matter
described in the specification of the reissue patent". Since the application
before us does not have additional descriptive matter we do not find Northern
Electric to be of assistance to the Examiner's position with respect to
intention.
From part 5 of the petition we are informed that the Japanese agent
instructed the Canadian agent of record to insert the product claims in the
Canadian application. Because the application Was in the process of
issuing the Canadian agent decided that it was not possible to insert the claims
to the compounds at that time. An affidavit by the Japanese attorney filed
subsequent to the final action response states the following:
5) THAT from an understanding of Canadian practice
in this office, it was decided that both sets of claims
in a single Canadian application would have brought an
objection from the Canadian Examiner of plurality of
invention and, that during the prosecution of the Application
No. 304,843 the applicants would have had to delete one
set of claims from the application and file a divisional
application thereto.
6) THAT in view of our understanding of Canadian
practice, and in order to minimize the cost of obtaining
protection for the applicant's invention in Canada, it was
decided in this office that as the fungicidal use of the
compounds was of primary commercial importance, to file
claims only to the fungicidal use of the compounds, namely,
to compositions containing the compounds of broad Formula I
of Page 2 of Canadian Application No. 304,843 and a
fungicidal carrier.
7) THAT while, on the grounds of economics, it was
decided in this office, in the first instance, to file
only claims to the fungicidal compositions, it was well
recognized that the compounds per se were novel and that
also the compounds had pesticidal activity and the
specification was drafted accordingly, namely, the
specification was drafted to emphasize the pesticidal
activity of the compounds, giving exemplification of the
experimental data with regard to pesticidal activity, on
Pages 56 and 57 of Application No. 304,843, and further,
to provide methods of preparing the compounds which were
novel, and give specific exemplification of the
compounds which were novel.
8) THAT if there had been no problems of unity of
invention appreciated in this office, claims to the
compounds per se and the pesticidal use of the compounds,
would also have been included in the application.
9) THAT subsequently during the prosecution of the
application in becoming aware of the fact that the
pesticidal activity of the compounds was also of commercial
importance and, it was realized that the claims filed with
the application did not provide sufficient protection for
the applicant's invention, as disclosed to us by the
applicants before the filing of the application and, it was
therefore decided to broaden the claims of the overseas
applications by way of insertion of claims to the novel
compounds per se, and this was done in the South African
application on or about November 8, 1978. However,
inadvertently, this was not effected in the Canadian
application and instructions were not sent to applicants'
Canadian agents of record until it was too late to insert
them into the Canadian application, as the Canadian
application was in issue, the final fee having been paid.
It is clear that the claims to the compound are fully supported by the
original disclosure and that applicant's instructions were to enter them in
Canada but appropriate action was not taken by the Canadian agent before the
issue of the original application. Consequently we do not agree with the
Examiners rejection that "applicants do not meet the test of intention as set
out by the tribunals".
We next consider the rejection made on added claims which are said to
"constitute an invention different from that defined by the claims of the
patent". Applicant maintains that the claims in the reissue application are
directed to a single invention namely "the discovery of fungicidal and
pesticidal properties in a class of compounds, a large number of which are
novel".
Claims 1 to 19 represent one aspect of the invention namely, an agricultural
fungicidal composition wherein the active ingredient is broadly set out and the
method of combatting bacteria and fungi are recited. We see the compound of the
invention now inserted by reissue claims 20 to 40 to be an aspect that is
narrower than and included within the breadth of the compound that forms the
active ingredient in the composition claims. Moreover, the restrictions in
claims 20 to 40 clearly fall within the scope of the compound recited for
example in claim 1. Further, Applicant's recognition that certain of the
compounds he has disclosed have more than one use should not present a barrier
to claiming them, providing they fall within the breadth of the compounds that
form his invention and "arise out of the same factual discovery or inventive
act", Hercules Inc. v. Diamond Shamrock Corporation 62 C.P.R. 43 @ 61. In Shell
Oil v Commissioner of Patents Supreme Court of Canada Nov. 2, 1982 Mme. Justice
Wilson considered Lawson v The Commissioner of Patents (1970) 62 C.P.R. 101 @
109 and looked with approval to the reasoning by Mr. Justice Cattanach where he
stated:
In the earlier development of patent law, it was
considered that an invention must be a vendible
substance and that unless a new mode of operation
created a new substance the invention was not
entitled to a patent, but if a new operation created
a new substance the patentable invention was the
substance and not the operation by which it was
produced. This was the confusion of the idea of the
end with that of means. However, it is now accepted
that if the invention is the means and not the end,
the inventor is entitled to a patent on the means.
In our view compound claims 20 to 40 represent part of the means of
achieving the end as expressed in composition claims 1 to 19. While each
group recites varying aspects of the Applicant's inventive idea we are unable to
find any distinction that would prevent their acceptance in the same
application.
Therefore, we recommend that the Final Action refusing the application be
withdrawn.
M.G. Brown S.D. Kot
Acting Chairman Member
Patent Appeal Board
I have reviewed the prosecution of this application and considered the
recommendation of the Patent Appeal Board. I concur with the reasoning and
findings of the Board. Accordingly I withdraw the Final Action and the
application is returned to the Examiner.
J.H.A Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 27th day of November 1986
Marks & Clerk
Box 957, Station B
100 Sparks Street
Ottawa, Ontario
K1P 5S7