A-161-86
Pioneer Hi-Bred Limited (Appellant)
v.
Commissioner of Patents (Respondent)
INDEXED AS: PIONEER HI-BRED LTD. V. CANADA (COMMIS-
SIONER OF PATENTS)
Court of Appeal, Pratte, Marceau and Lacombe
JJ.—Ottawa, January 14 and March 11, 1987.
Patents — Patentability of new soybean variety derived by
artificial cross-breeding — Appeal from Commissioner of
Patents' decision refusing patent application — Appeal dis
missed — Per Marceau J.: First such case in Canada — Under
U.S. law, man-made micro-organism and hybrid seeds and
plants patentable — In Canada, definition of "invention" in
Act not applicable to cross-bred variety of plant as latter not
within ordinary meaning of "manufacture" or "composition of
matter" — Per Pratte J.: New variety of soybean not "inven-
tion" — Incapable of being described, as required by Act s.
36(1), so as to enable any person skilled in relevant art or
science to make it — "Degree of luck" involved — Depositing
seeds at governmental agencies in U.S.A. and Canada not
satisfying requirements of Act s. 36(1) — Patent Appeal Board
erred in Abitibi case in holding depositing new micro-organism
in culture collection accessible to public satisfying require
ments of s. 36(1) — Patent Act, R.S.C. 1970, c. P-4, ss. 2,
36(1).
CASES JUDICIALLY CONSIDERED
NOT FOLLOWED:
Re Application of Abitibi Co. (1982), 62 C.P.R. (2d) 81
(Pat. App. Bd.).
CONSIDERED:
Diamond v. Chakrabarty, 447 U.S. 303 (1980); Ex Parte
Hibberd, 227 U.S.P.Q. 443 (Bd. Pat. App. & Inter.).
REFERRED TO:
American Cyanamid Company (Dann's) Patent, [1971]
R.P.C. 425 (H.L.).
COUNSEL:
David Watson, Q.C. for appellant.
B. Mcisaac for respondent.
SOLICITORS:
Gowling & Henderson, Ottawa, for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
PRATTE J.: I agree with Mr. Justice Marceau
that the discovery of the new variety of soybean
for which the appellant seeks a patent was not an
invention within the meaning of the Patent Act
[R.S.C. 1970, c. P-4]. This is shown, in my view,
by the fact that the alleged invention is incapable
of being described, pursuant to subsection 36(1) of
the Act, so as "to enable any person skilled in the
art or science to which it appertains ... to make
... it". Indeed, the material filed by the appellant
in support of its application shows that the new
variety of soybean was developed through cross
breeding and selective breeding and that the selec
tion steps of that development involved "a degree
of luck", "an element of good fortune". It follows
that even a complete and accurate disclosure by
the appellant of everything that the alleged inven
tor did to develop the new plant, would not enable
others to obtain the same results unless they, by
chance, would benefit from the same good fortune.
In order to obviate that difficulty, the appellant,
in describing its new variety of soybean, disclosed
that seeds of the new plant had been deposited at
governmental agencies in the United States and in
Canada and that samples of the seed were avail
able from those sources. However, that disclosure,
while it could in certain circumstances enable one
to produce the new variety of plant, does not, in
my view, satisfy the requirements of subsection
36(1). The use of the seeds deposited by the
appellant is, in a sense, the use of the invention
itself. Subsection 36(1), as I read it, requires that
the description be such that third persons, who do
not have access to the invention or anything pro
duced by it, be enabled to reproduce it. This
opinion conflicts with the conclusion reached by
the Patent Appeal Board in the Abitibi case'
where it was held that depositing a new micro
organism in a culture collection to which the
public had access was sufficient to satisfy the
requirements of subsection 36(1). That conclusion
of the Board was, in my opinion, clearly wrong and
based on what I consider to be an untenable
interpretation of the decision of the House of
Lords in American Cyanamid Company (Dann's)
Patent. 2
For these reasons and those given by Mr. Justice
Marceau, I would dismiss the appeal.
* * *
The following are the reasons for judgment
rendered in English by
MARCEAU J.: Legislation designed to encour
age, protect and reward the innovative efforts of
human beings has existed in Canada since before
Confederation and its application through all those
years has given rise to numerous judicial pro
nouncements. Yet the problem raised by the
present patent case, although a long-standing one
and a by-product of a world-wide phenomenon,
has never been submitted to a Canadian court.
The appeal is brought against a decision by the
Commissioner of Patents whereby an application
by the appellant for a grant of patent rights in a
variety of soybean was refused. The appellant
contends that the Commissioner erred in determin
ing that a strain of naturally grown plant derived
by artificial cross-breeding is not an invention
within the meaning of section 2 of the Patent Act,
R.S.C. 1970, c. P-4 (hereinafter the Act).
It is not disputed that the refusal of the Com
missioner was consistent with traditional interpre
tation and application of patent legislation in this
country. The assumption that life forms are not
patentable subject matter has been up to recent
years so generally accepted that nobody would
even have thought of disputing its validity in court.
Such an attitude may have arisen from an instinc
tive reaction to the apparent gap between animate
Re Application of Abitibi Co. (1982), 62 C.P.R. (2d) 81, at
pp. 90-91.
2 [1971] R.P.C. 425 (H.L.).
and inanimate matter and it may have continued
to prevail because it reflected the true state of the
sciences and technological arts. Scientists had not
succeeded in constructing or manufacturing living
organisms and drawing the line between patent-
able and unpatentable subject matter at the point
where life begins was useful. But the spectacular
advances realized recently in the biosciences and
biotechnology could only but call into question
this practice of excluding peremptorily living
matter from the sphere of application of our patent
legislation.
In the United States, where the general patent
legislation is similar to that of this country, the
assumption that life forms are not patentable sub
ject matter has been rejected in two recent deci
sions, one of which being a decision by the
Supreme Court itself. In 1980, in the now famous
case of Diamond v. Chakrabarty [447 U.S. 303],
the Supreme Court declared valid patent claims
for a man-made micro-organism capable of
degrading four kinds of hydrocarbons. In 1985, in
Ex Parte Hibberd [227 U.S.P.Q. 443], the U.S.
Board of Patent Appeals and Interferences, on the
basis of the decision in Chakrabarty, acknowl
edged that hybrid seeds and hybrid plants could be
patented under 35 U.S.C. § 101 et seq. (1982), the
United States general patent law, notwithstanding
the provisions of the two specific Acts which had
been adopted in the United States for the protec
tion of plant breeders, the Plant Patent Act [35
U.S.C. § 161 et seq. (1982)] and the Plant Variety
Protection Act [7 U.S.C. § 2321 et seq. (1982)].
In Canada, the assumption that living organisms
are not patentable subject matter has never been
formally rejected by a court of law but it has been
under attack with some success before the Com
missioner of Patents who recently, in a case quite
similar to that of Chakrabarty in the United
States, accepted an application for a yeast culture
engineered to digest certain waste products in the
effluent from a pulp and paper plant (Re Applica
tion of Abitibi Co. (1982), 62 C.P.R. (2d) 81). In
the present case, the attack against the traditional
view is brought much further, and, interestingly
enough, the subject matter of the application is, as
in Ex Parte Hibberd in the United States, a plant.
The appellant's main submission, in support of
which the American jurisprudence is of course
directly relied on, may be summarized as follows.
The strain of soybean it has developed (Variety
0877) is unique considering the combination of
desirable characteristics it provides,' and not only
was it not previously found in nature but the
chances of its being engendered by natural pro
cesses without the intervention of the hand of man
is "essentially impossible by all standards of
reasonable probability". This unique soybean var
iety is therefore basically a creation of man and is
in that sense a real invention which meets any test
for patentability; the fact that it is a plant, a living
organism, should be disregarded as simply having
no bearing.
This submission of the appellant, at least as
presented, does not appear to me to be directed to
the real issue. I am prepared to accept that the
Canadian patent legislation does not support the
assumption that life forms are definitely not pat-
entable. I too question the contention which may
appear to be advanced by the Board in some
passages of its reasons that the Commissioner in
Canada, contrary to his counterparts in the United
States and in England, has the authority, in assess
ing the merits of an application, to establish limits
to patentability other than those expressly or
impliedly defined by Parliament. But, the real
difficulty is not there; it is more basic. There is in
Namely:
a) High oil content
b) Early maturity
c) Stable high yields
d) Resistence to seed shattering, and most importantly
e) Disease resistence to races 1 and 2 of Phytophthora
megasperma var sojae as well as moderate resistence to
another fungal pathogen Sclerotinia Sclerotiorum
the Act a definition of invention, a definition
which was obviously meant to determine the scope
and limits of the patent system, which reads:
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;
The question to be determined is basically and
simply whether, on a proper construction of the
terms used in that definition, the subject matter of
the application, a soybean variety developed by
cross-breeding, can be said to be an invention in
the sense in which the word was understood by
Parliament.
The appellant, in argument, in answer to that
preliminary question, has attempted to demon
strate that a cross-bred variety of plant falls within
the common and ordinary meaning of either or
both the term "manufacture" and the phrase
"composition of matter" found in the statutory
definition and to that end it referred to various
dictionaries, especially to the following definitions
relied upon by the United States Supreme Court in
Chakrabarty:
manufacture: the production of articles for use from raw ma
terials prepared by giving to these materials new forms, quali
ties, properties or combinations whether by hand labor or by
machinery
composition of matter: all compositions of two or more sub
stances and ... all composite articles, whether they be the
results of chemical union or of mechanical mixture, or whether
they be gases, fluids, powders, or solids.
I have not been convinced. Even if those defini
tions were held to be applicable to a micro-organ
ism obtained as a result of a laboratory process, I
am unable to go further and accept that they can
also adapt to a plant variety produced by cross
breeding. Such a plant cannot really be said, other
than on the most metaphorical level, to have been
produced from raw materials or to be a combina
tion of two or more substances united by chemical
or mechanical means. It seems to me that the
common ordinary meaning of the words "manu-
facture" and "composition of matter" would be
distorted if a unique but simple variety of soybean
were to be included within their scope.
It is argued that the very nature of the patent
system and the benefits that were expected there
from should lead to the conclusion that Parliament
intended the most open and favourable approach
to its statute. Maybe so, but I do not think that
such an approach would permit the interpreter to
dispense with the necessity to respect the results
suggested by a careful analysis of the terms used
in the statute. Besides, speaking of the intention of
Parliament, given that plant breeding was well
established when the Act was passed, it seems to
me that the inclusion of plants within the purview
of the legislation would have led first to a defini
tion of invention in which words such as "strain",
"variety" or "hybrid" would have appeared, and
second to the enactment of special provisions cap
able of better adapting the whole scheme to a
subject matter, the essential characteristic of
which is that it reproduces itself as a necessary
result of its growth and maturity. I do not dispute
the appellant's contention that those who develop
new types of plants by cross-breeding should
receive in this country, as they do elsewhere, some
kind of protection and reward for their efforts but
it seems to me that, to assure such result, the
legislator will have to adopt special legislation, as
was done a long time ago in the United States and
in many other industrialized countries.
In sum, relying both on the common meaning of
the words of the definition for "invention" as it
appears in the Act and on the legislative context in
which they are found, insofar as the intention of
Parliament may be derived therefrom, I am satis
fied that the soybean variety developed by the
appellant cannot be the subject matter of a patent
of invention.
I would dismiss the appeal.
LACOMBE J.: I agree.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.