Hyperlawhypertext legal database Tennessee Eastman Co. et al. v. Commissioner of Patents [1974] SCR 111

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Tennessee Eastman Co. et al. v. Commissioner of Patents

[1974] SCR 111 Court SCC Decision date 1972-12-22 English

PartiesTennessee Eastman Company, a division of Eastman Kodak Company: Eastman Kodak Company and Ethicon, Inc. Appellants·The Commissioner of Patents Respondent

Counsel (4)
G.F. Henderson, Q.C., G.A. Macklin and R. Jackson for the appellants.
G.W. Ainslie, Q.C., and A.P. Gauthier, for the respondent.
Solicitors for the appellants: Gowling & Henderson, Ottawa.
Solicitor for the respondent: D.S. Maxwell, Ottawa.

Judges Martland, Ronald; Ritchie, Roland Almon; Hall, Emmett Matthew; Pigeon, Louis-Philippe; Laskin, Bora

Delivered by Judgment of the Court

On appeal from Canada

Subjects Intellectual property

Contents

Judgment of the Court

The judgment of the Court was delivered by

The claims generally describe a surgical method for joining or bonding the surfaces of incisions or wounds in living animal tissue by applying the compounds described in the claims in a liquid state, directly to at least one of the tissue surfaces to be bonded.
The discovery that these particular compounds had an unexpected property of bonding human tissue is new and useful and unobvious but the compounds described in the claims were old and well known.
The ground on which the Commissioner refused to grant a patent to the applicant was that the method for surgically bonding the surfaces of living animal tissue as covered by the claims in the said application does not constitute patentable subject matter under subjection (d) of section 2 of the Patent Act, in that it is neither an art, or a process within the meaning of said subsection.
The issue before this Honourable Court is whether the method for surgical bonding of body tissues by applying to one of the tissue surfaces to be bonded, one of the compounds described in the claims, is an art or process or an improvement of an art or process within the meaning of subsection (d) of section 2 of the Patent Act.

[Page 113]

The parties agree that on the hearing of this appeal any of the documents appearing in the record file of this application, together with the matters therein contained, may be adduced in evidence without formal proof thereof, and the facts stated in the affidavit of David W. Fassett and in patent application serial number 884,804 are accepted as true.
The parties agree that the issue stated in paragraph 4 is the only one which was considered by the Commissioner, and in the event the appeal is allowed and the Commissioner’s decision to refuse to grant a patent is set aside, the appellant Ethicon, Inc. will be at liberty to resume the prosecution of its application.

Footnotes

  1. [1] (1970), 62 C.P.R. 117.
  2. [2] [1968] S.C.R. 950, 55 C.P.R. 207, 69 D.L.R. (2d) 353.
  3. [3] (1966), 33 Fox Pat. C. 153, 51 C.P.R. 102, [1967] 1 Ex. C.R. 57.
  4. [4] [1959] S.C.R. 219, 30 C.P.R. 59, 17 D.L.R. (2d) 153.
  5. [5] [1962] R.P.C. 37.
  6. [6] [1961]R.P.C. 147.
  7. [7] [1961] R.P.C. 134.
  8. [8] [1955] S.C.R. 414, 15 Fox Pat. C. 99, 23 C.P.R. 1.
  9. [9] [1971] R.P.C. 337.
  10. [10] (1954), 103 U.S. P.Q. 107.
  11. [11] (1862), 5 Blatchford 116.

Statutes and regulations cited