328 EXCHEQUER COURT OF CANADA. [VOL. V I. 1900 HER MAJESTY THE QUEEN ex ,JTanay. io, rel. THE AMERICAN STOKER PLAINTIFF ; COMPANY AN D THE GENERAL ENGINEERING COMPANY OF ONTARIO (Lim- DEFENDANTS. ITED) Practice--Seire facias to repeal patent—The Patent Act sec. 6, sec. 34, sub-sec. 2—Expiry of foreign patent—" Cause as aforesaid "—Jurisdiction. Upon a proceeding by scire facias to set aside a patent for invention because of an alleged expiry of a foreign patent for the same invention under the provisions of sec. 8 of The Patent Act. Held, that there was so much doubt as to that being one of the clauses included in the expression " for cause as aforesaid " in clause 2 of sec. 34 of the Act that the action should be dismissed. ► CIRE FACIAS to repeal a patent for invention. The facts of the case are stated in the reasons for judgment. The case was heard before THE JUDGE OF 1HE EXCHEQUER COURT. at Montreal, on the 8th Novem-ber, 1899. B. B. Oster, Q. C. for the defendants : The writ of scire facias does not lie to repeal a patent in this country simply because a foreign patent for the same invention has expired. That is not one of the causes within the meaning of sec. 34, sub-sec. 2 of The Patent Act. (Cites Hindmarch on Patents (1). It would be manifestly inequitable for us to lose the protection of the grant from the Crown in Canada because a foreign patentee, over whom we have no control whatever, has not carried out the provisions of (1) P. 384.
VOL, VI.) EXCHEQUER COURT OF CANADA. ,329 the foreign law respecting the continuity of the patent 1900 there. The result of a judgment. for plaintiff.in an THE action of scire facias is to declare the patent void from QUEE N the beginning. That is a most radical penalty for a THE breach of foreign law by'a partyover whom. we have GENERAL Vie control. Parliament could. not have intended such INo Co. of ONTARIO. an injustice. (Cites 22.Vict. (Prov. Can.) c. 34 sec. 5 ; 32 & 33 Vict. c. 11 sec. 7 ; 35 Vict. c. 26 sec. 7 ; 55-56 ô . e Vict. c. 24 . sec. 1; U. S. Acts of Congres', 1839, sec. 6 ; 1870, c. 230 sec. 25 ; 1884, sec. 4887 ; 15 & 16 Vic. (U. K.) c. 83 sec. 25 ; 46 & 47 Vict. (U. K.) c. 57. In re Blake's .Patent (1) ; In. re Betts' Patent (2) ; French V. Rogers (8) ; O'Reilly y. Morse (4) ; Auer Light v. Dreschel (5) ; Hull v. Hull (6).) J. L. Ross followed for the defendants : With reference to the meaning of the word " expiry " in the Canadian Patent Act, sec. 8, I would cite Burns y. Watford (7). There it was held that the term " expiration" did not cover termination by forfeiture, but only termination by lapse of time. The meaning of the word " expiry " as applied to letters patent for inventions has also been considered by the United . States Supreme Court. (Cites Pohl v. Anchor Brewing Co. (8) ; Bate. Refrigerating Co. v. Hammond (9),; Consolidated Roller Mills v. Walker (10) ; Re Mann (11) ; Holmes Electric Protection Co. v. Metropolitan Alarm Co. (12)). • As to the particular meaning of the words " foreign country " as applied to this case, .I would cite The Consolidated Statutes of Canada, c. 34 sec. 1. It says that the expression "foreign county " includes any country (1) L. R. 4 P. C. 635. (7) W. N. (1884) 31. (2) 1 Moo. P. C. N. S. 59. (8) 20 Brodex 190. (3) 1 Fish. P. C. 136.' (9) 19 Brodex 231. (4) 16 How. 127. (10) 43 Fed. R. 575. (5) 6 Ex. C. R. 68. (11) 17 Off. Gaz. 330. (6) 4 Ch. D. 97. , (12) 22 Fed. R. 341.
330 EXCHEQUER COURT OF CANADA. [VOL. VI. 1900 not under the British dominion or subject to the THE Crown of Great Britain, QUEEN [By the Court.--The interpretation would not apply V. THE to the Dominion statutes.] GENERAL ENGINEER- Not expressly, but impliedly. The section of The ING CO. OF Patent Act has not materially changed since then. ONTARIO. Argument D. McMaster, Q.C. for the plaintiff: The chief ques-of Counsel. tion arising in this case is answered by the provisions of section 34 of The Patent Act. I take it that under that section you may attack a patent directly by the aid of the writ of scire facias for the same causes as you may plead against the validity of a patent in an action of infringement. The words "for cause as aforesaid " include the cause for which we claim the patent here in question is void. Then again, take the provisions of the 8th section of The Patent Act: " under any circumstances if a foreign patent exists the Canadian patent shall expire at the earliest date on which any foreign patent for the same invention expires." The meaning of the enactment is this, viz.: that if there has been a foreign patent at all for the same invention, the Canadian patent shall expire simultaneously with the expiry of the foreign patent. F. S. Maclennan, Q.C. followed for the plaintiff: The writ of scire facias is a remedy provided by English law for the repealing of any Crown grant that has become void or was improvidently granted. (Cites Comyn's Dig., 5, vo. "Patent " F. 3 and vo. " Officer" K" ; R. v. Tolly (1) ; R. y. Eston (2) ; Sir Robert Ches-ter's Case (3) ; R. v: Eyre (4) ; Reg. y. Cutler (5) ; Stephen's Corn. (6) ; Broom's Constitutional Law (7) ; The Queen v. Prosser (8) ; The Queen v. Hughes (9) ; (1) 2 Dyer 197a. (5) 3 C. & K. 227. (2) 2 Dyer 197b. (6) II p. 33 ; III p. 668. (3) 2 Dyer 211. (7) 2nd ed. 238. (4) 1 Strange 43. (8) 13 Jur. 71. (9) L. R. 1 P. C. 87.
VOL. VI:J ,EXCHEQUER COURT OF CANADA. 3314 Eastern Archipelago Co. .v. ;The Queen (1) ; Fonseca,v. 1900 Attorney-General of Canada,.(2)'; Fôster..ôn.-°Scire.Facias ' (3) ; Hindmarch o' Patents (4).; Edmundi`:ôn Patents::. QII .v E . (5) ; Agnew on Patents (6).j ;. THE- GENE , .,•, The meanie g f or thepu P rp o P s es of -this 'case of thé E NC#INEER-- term "-obtaining " in the 8th section of The Patent ActI x Co, otA O a NTARIO: is its plain and -ordinary meaning. It means • when a • — patent is :obtained, not when it is applied for. If the 4~ Canadian •patent is obtained after the foreign patent, then the expiry of the latter puts an end to thé former, no matter if the Canadian patent was applied for before the. foreign patent was obtained. (Cites Gramme Electric Company v., Arnoux Electric Co. (7) ; Edison • Electric Light Co. v. United States Electric Light Co. (8),. The Italian patent is identical with the Canadian patent. The differences between the two specifications, are immaterial and merely. verbal. (Cites. Siemens v. Sellars (9) ; Ridout on Patents (10) ; Commercial Mfg:. Co. v. Fat , banks Canning- Co.. (11)) The failure to pay the fees due upon. the Italiain, patent operated an absolute forfeiture under the Italian patent laws. (Cites Abbott's Patent Laws (12)). It is-only 'upon paying the fees from year to year that., an: ,Italian patent can be kept in existence for fifteen years.. (Cites Bonesack Machine Co. v. Smith (13)). The provisions of Art. 4887 of the United States-Patent Act, are instructive to show what our legislature probably intended to enact on the same subject. The r'rench law is to the same effect. The-French courts have unanimously held that the-- (1) 2 EL & B. 856. (7) 25 Of. Gaz. 193. (2) 17 Can. S. C. R. 612. ' (8) 43 Of, Gaz. 1456. (3) P. 246. (9) 123 U. S. 276. (4) P. 385. (10) P. 83. (5) P. 356. , (11) 135 U. S. 176. . (6) P. 340. (12) P. 283. (13) ,73 Of. Gaz. 963.
832 EXCHEQUER COURT OF CANADA. [VOL. VI. 1900 termination by forfeiture of a foreign patent also T operated a forfeiture of a French patent for the same QU v E . . EN invention. (Cites. Jour. du Pal. (1) ; Dalloz, Jur. Gen. WE 1864 (2) ; Dalloz, Jur. Gen. 1882 (3); Rendu : Code de 4a1vERAL ENGINHER_ l a Propriété Industrielle (4) ; Gogjet k Merger : Diction- C°• " ?aire du Droit Commercial (5) ; Blanc : Traité de la contrefaçons en taus genres (6) ; Nouguier : Traité dee actes &ra i anent of Oouneel. de commerce (7) ; Dalloz, Rep. vol. 6 (8) ; Bédarride : Commentaire des lois sur les Brevets d' Invention (9) ; Daw v. Ely (10).) Mr. Osler replied : I would refer to Abbott's Patent Laws, Art. 59 p. 294, to show that by the non-payment of fees the Italian patent was voidable only and not void. THE JUDGE OF THE EXCHEQUER COURT now (Janu-ary 10th, 1900,) delivered judgment : This is a proceeding by scire facias to repeal letters patent, numbered 40700, granted to Evan William Jones, on the 15th day of October, 1892, for alleged new and useful improvements in boiler and other furnaces. The grounds on which it is sought to impeach the patent are that the Italian. and British letters patent for the same invention have expired within the meaning of the 8th section of The Patent Act. The questions raised and debated are : 1. Whether the Italian and English patents, one or both, are for the " same invention" as the Canadian patent referred to ? 2. Whether the expression " if a foreign patent exists", in the last clause of the 8th section of The Patent Act, has reference to a foreign patent existing (1) [1894] p. 727. (6) P. 313. (2) Pt. 1, p. 146. (7) P. 137. (3) Pt. 1, p. 253. (8) P. 10. (4) Vol. 1 sec. 62 (9) Vol. 1, pars. 348 and 360. (5) Vol 3, p. 551. (10) L. R. 3 Eq. 496.
VOL. VI .1 EXCHEQUER COURT OF CANADA. 333 when' the Canadian patent is granted, or to one exist-1900 in'g when the Canadian patent is applied for ? THE 3. Whether the expression, in the said section, " at QIIEEN. 017. the earliest date on which any foreign patent for the TUE same invention ex P p ires" is to be limited to the ex P i . ra- GNEGNIENREE~ ENGINEER- Lion by lapse of time of the potential term of the foreign Co. EG or patent, or whether it includes any determination of such term ? asene Re for Jud ens. 4. Whether a British patent is a " foreign patent " within the meaning of the said. section ? and— 5. Whether a writ of scire facias will lie in this court to repeal Canadian letters patent which have, by reason of the expiry of a foreign patent, expired before the end of the term for which they were granted? In an action for infringement brought by the defendant company on the letters patent referred to against the company at whose relation this proceeding is instituted, there was judgment for the former company. It was not made a matter of defence in that action that such letters patent had expired. The defendants therein' say. that at the time of the tri al :they had no knowledge that such was the fact. On learning of it they applied for a new trial of that action and obtained an order nisi which is now pending. In the meantime this proceeding has been taken to determine the question whether the Canadian patent referred to has expired or not. That is the substantial controversy between the parties and in it are involved four of the five questions stated. The fifth question is raised by the defendant company. While contending that their Canadian patent has not expired, they say that assuming it has transpired, a writ of scire facias will not, for that reason, lie for its repeal. If that,, contention is maintained it is obvious that no opinion ought to be expressed in reference .to the other questions, although both parties profess to desire it.
:334 EXCHEQUER COURT OF CANADA. [VOL, VI, 1900 That the court has power for sufficient cause to TEE revoke letters patent for an invention is not in doubt. QU E EN n. The question in issue is one of procedure, not of juris THE diction. By the 17th section of The Exchequer Court Act, GENERAL ENGINEER- (1) the court is given jurisdiction, among other things , ING CO. OF in all cases in which it is sought, at the instance of the ONTARIO. Attorney-General of Canada, to impeach or annul any nonsonn ..Tudg fo m r ent. patent of invention. By the 21st section of the same Act it is provided that the practice and procedure in suits, actions and matters in the Exchequer Court shall, so far as they are applicable and unless it is otherwise provided by the said Act, or by rules made in pursuance thereof, be regulated by the practice and procedure in similar suits, actions and matters in Her Majesty's High Court of Justice in England at the time .of the coming into force of the Act (October 1st, 118 87). Prior to that date the proceding by scire facias to repeal ,a patent had in England been abolished, and the procedure then in force there for the revocation of a patent was by a petition to Her Majesty's High Court of -Justice (2) By the 11th section of The Patent Act (3), the applicant for a patent has, for the purposes of the Act, to elect his domicile at some known and specified place in Canada,—and to mention the same in his petition for the patent ; and by the 34th section of the Act, as enacted in The Revised Statutes (1887), it was provided that any person who so desired to impeach any patent issued thereunder might obtain a sealed and certified copy of the patent, and of the petition, affidavit, specification and drawings thereunto relating, .and might have the same filed in the office of the clerk of certain Superior Courts therein named, according to the domicile elected by the patentee, which ..(1) 50-51 Vict. c. 16, a. 17 (b). Trade-Marks Act 1883, 46 & 47 .(2) The Patents, Designs and Viet, c. 57, ss. 26 and 117. (3) E. S. C. c. 61.
VOL. VI.] EXCHEQUER COURT OF courts respectively should adjudicate on the matter and decide as to costs., It was further provided (s. 34? $s. 2) that the patent and documents mentioned. should: Qu then be held as of record in such courts respectively, sô. that a writ of scire facias, under the seal of the court grounded upon such record, might issue for the repeal of the patent, for cause as aforesaid,-if after proceed- ings had upon the writ in accordance with the mean- ing of . the Act the patent should be adjudged void. In 1890, by an amendment ,of The Patent Act (1), the Exchequer Court was added, to the courts by which this jurisdiction could in a proceeding by be exercised. By the.second section of the Act of 1890 the Exchequer Court was also given jurisdiction upon. information in the name of the Attorney-General, and at the relation of any person interested, to decide, whether or not the patent had become void for failure, to manufacture the invention as provided in the Act, or for importation thereof contrary to the Act ; and in. 1891 the provision was further amended by striking-out the words " at the relation of any person interested " and substituting therefor the words "or at the suit of any person interested " (2). In the same year- amendment of The Exchequer Court Act was, among other things, given jurisdiction as well between subject and subject, as otherwise, in all cases in.which it is sought to impeach or annul ,any patent of invention. By the general order of. court of the 13th: day of November, 1891, it was provided that the rules of.the court, then, in force in the court should apply to any proceeding under court, Amendment Act, 1891 (4), and that otherwise such proceeding should follow the . practice of the (1) 53 Viet. e. 13, s. 1. 55-56 Vict. e. 24, s. 6. (2) R. S. C. 61, s. 37 ; 53 Vict. (3) .54-55 Vict. c.. 26: s. 4. e. 13, e. 2 ; 54-55 Vict. c.• 33.;• and (4) 54-55 :Viet.. c.:26.• -CANADA. 335 1900 T ti . r r - THE GENIENREAEL EN(3INffiffiR- Co IÔari ARIOF Reansons , . Naagnient. scire facias by an-(3) the court-. in other matters, The Exchequer
336 EXCHEQUER COURT OF CANADA. [VOL. VI. 1900 High Court of Justice in England. The effect of that T E was to provide that any proceeding between subject QUEEN C. and subject to impeach or annul any patent of inven- THE tion should be instituted by filing a statement of GNEGNENREAELR -ENGINEER- claim according to the ordinary practice of the court (1) . INa Co. or By another general order made on the 5th of ONTARIO. December, 1892, it was provided that in any proceed- for in g to impeach any patent under the 34th section of Judgment. — The Patent Act, the practice and procedure which in like proceedings were in force in Her Majesty's High Court of Justice in England immediately prior to the passing of The Patents, Designs and Trade-Marks Act, 1883, should be followed as near as might be, and that in any such proceeding the person seeking to impeach the patent might in addition to the grounds mentioned in the 34th section of The Patent Act set up and rely upon any breach of the conditions to manufacture, and not to import, mentioned in the 37th section of the Act. It was further provided (2) that where it was sought to impeach a patent on the grounds mentioned in section 37, and for no other cause, proceedings to have the same declared null and void might be taken by information in the name of the Attorney-General of Canada, or by a statement of claim at the suit of any person interested, in accord-nice with the ordinary practice of the court. The result of all this appears to be that at present and until it is otherwise provided : 1. A petition, according to the practice now in force in England, will lie at the instance of the Attorney-General to revoke a patent upon any sufficient ground, excepting perhaps those mentioned in the 37th section of The Patent Act ; (1) Rule 7 of the Exchequer (2) Rule 3. Court Rules.
VOL. VI.] EXCHEQUER COURT REPORTS. 337- 2. A n information in the name of the Attorney- 1900 General will lie to revoke a patent for non-manufac- x ture, as provided in the 37th section of The Patent Act, QIrEE v. N : or for importation of the invention in contravention THE GENERAL. thereof ; ENGINEER- 3. That a statement of claim in accordance with the ING Co. of ONTARIO. ordinary practice of the court will lie at the suit of Reasons' any person interested to impeach or annul a patent, or Jud for gment. to have the same declared null and void on any good ground, and 4. That a writ of scire facias will lie to impeach a patent " for cause as aforesaid " (whatever that may. include) mentioned in the 34th section of The Patent Act, and that where it will so lie the grounds stated in the 87th section of the Act may also be relied upon.* It is, however, with the proceeding by writ of scire facias that one is concerned in this case. The other proceedings are mentioned because they help us to a better understanding of the matter, and show, I think, that a writ of scire facias will not lie to impeach a patent, exoept for the cause mentioned in the 34th section of The Patent Act. What is the cause therein referred to ? Does it include . as one of such causes the expiration of a Canadian patent under the provisions of the 8th section of The Patent Act? To answer either of these questions it is necessary, I think, to have in mind the history of the provision in which the words " for cause as aforesaid" occur. In 1824, by the 8th section of an Act passed by the Legislature of Lower Canada to promote the progress of useful arts in the province, (1) it was provided that by a proceeding by motion made before a judge of the *REPORTER'S NOTE : — These practice established by the rules ' rules were rescinded on the 25th published in this volume. day of January, 1900, and a new (1) 4 Geo. IV. ch. 25. 23
338 EXCHEQUER COURT REPORTS. [VOL. VI. 1900 Court of King's Bench, within three years after the E issuing of a patent, but not afterwards, a rule might Qu v . be obtained calling upon the patentee to show cause THE why process should not issue for the repeal of the GENERAL ENGINEER- p atent. The grounds upon which such a rule could INCI CO. OF ONTARIO. be granted were that the patent had been obtained surreptitiously or upon false suggestion; and if no !te, mo its for sufficient grounds were shown to the contrary, Judgment. or if it appeared that the patentee was not the true inventor or discoverer, judgment was to be rendered for the repeal of the patent. The 6th section of the Act dealt with defences to an action for infringement. These provisions were adapted from the Patent Act of the United States of 1793. The provision in respect to the revocation of the patent, which in that country first occurred in the Act of 1790, remained in force there until 1836, when it was repealed. The corresponding provision was continued in Lower Canada by 6 Wm. IV. c. 34, s. 9 (1836), until 1849, when by an Act of the Province of Canada (1) a proceeding by scire facial to repeal a patent was substituted for that by motion to a judge of the court. The Act last referred to followed in this respect the Act of the Province of Upper Canada, 7 Geo. IV. chapter 5 (l 826) ; by the 8th section of which it was in substance provided that at any time within three years after the issuing of any patent any person desiring to impeach the same because it had been fraudently or surreptitiously obtained, or had issued improvidently or upon false suggestion, might obtain an exemplification of such patent under the great seal of the province, and have the same filed with the Clerk of the Crown and Pleas, and thereupon such letters should be considered as remaining of record in the Court of King's Bench, so that a writ of scire facias, (1) 12 Viet. c. 24, s. 17.
VOL. Nil EXCHEQUER COURT REPORTS. 339 under the seal of the court, might issue grounded 1900 upon the said record for the purpose of repealing the THE same for legal cause as aforesaid, if upon the proceed- .QvvEEN ings which should be had upon the writ of scire facias, THE according to the law and practice of the Court of GENERAL ENGINEER _ King's Bench in England, the same should be declared IO N N ct Co. or TARIO void. The 6th section of 7 Geo. IV, chapter 5, dealt with certain defences that might be pleaded in an se ôr' Judgment. action of infringement, but it is clear that, in this statute in which we find in its earliest form in Canada the provisions corresponding to the 34th section of The Patent Act now in force, the " legal cause as aforesaid," referred to the grounds enumerated in the 8th section of the Act. The same is true of the same words where they occur in the 17th section of the Act of the Province of Canada, 12 Vict. chapter 24, before referred to, and in the 20th section of The Consolidated Statutes of Canada, chapter 34. There can be no question that the " legal clause aforesaid " for which a patent might be repealed in proceedings by scire facias according to these statutes was limited to the grounds mentioned, namely : where the patent had been fraudulently or surreptitiously obtained, or • where it had issued improvidently or upon false suggestion. When we come to the Act of 1869 (1) which applied to the Dominion of Canada, we find considerable change and the matter is not so clear. By the 26th section of that Act it is provided that a defendant in . an action of infringement might specially plead, as matter of defence, any fact or default which by the Act or by law would render the patent void. By the 27th section it was enacted that a patent should be void, if any material allegation in the petition or declaration of the applicant were untrue, or if the (1) 32.33 Viet. e. 11. 23%
340 EXCHEQUER COURT REPORTS. [VOL. VT. 1900 specifications contained more or less than was neces- THE cary for obtaining the end for which they purported QUEEN to be made, such omission or addition being wilfully TEE made for the purpose of misleading. By the 28th GENERAL - section it wasprovided that every pa tent granted !NG Co. OF under the Act should be subject to the conditions ONTARIO. therein expressed as to manufacture and importation Rea/Ina o f the invention, and should be void for breach of Judgment. such conditions. And then comes section 29 by which a proceeding by writ of scire facias is given to repeal a patent " for legal cause as aforesaid," no cause being stated in the section itself, differing in that respect from the earlier provisions that have been referred to. If the question was to be determined by the Act of 1869 alone, there would, I think, be very good reason to think that the writ would lie to repeal the patent for any fact or default that renders it void. The only argument to be raised against that view arises from the fact that in the divisions of the Act, the 26th section occurs with those that relate to the " assignment and infringement of patents," while the 27th, 28th and 29th sections are under the heading: " Nullity, Impeachment and Voidance of .Patent." But that clearly is not conclusive. In The Patent Act of 1872 (1) the arrangement and number of the corresponding sections are the same as. in the Act of 1869. But there is added to section 28 a proviso that any disputes which might arise as to whether or not a patent had become void for non-manufacture or for importation contrary to the statute, should be settled by the Minister of Agriculture or his deputy, whose decision should be final. From which it would follow that the " cause aforesaid " for which, by the 29th section, scire facias would lie to repeal a patent, would not include the breach of the- (1) 35 Viet. c. 26.
VOL. VI.] EXCHEQUER COURT REPORTS. 341 conditions prescribed by the 28th section ; and it 1900 would not be true that it would lie for any fact or TEis default which by the Act or, by law rendered the QII~' patent void. If the words cited from the 29th section TEIll had any reference to the 26th section, the terms of the É ( INEEB- latter must, at least to the extent mentioned, be quali- NOGN Co. or fled. Before leaving this statute it will be convenient $.e fps=m to notice that in it first occurs the provision that : Judgment. " under any circumstances where a foreign patent " exists, the Canadian patent shall expire at the earliest " date at which any foreign patent for the same inven-" tion expires" (1). Here is a new ground for deter-, mining a patent. Clearly it might be pleaded as a defence to an action for infringement ; but it is not at all clear that it • could be invoked as a ground upon which a patent could be repealed by scire facias. The Revised Statutes, chapter 61, (An Act respec. itig Patents (f Invention), does not, I think, throw any new light on the question, or remove any of the difficulty. The division of the chapter, and the arrangement of the sections are altered. Section 27 of the Act of 1872 becomes section 28 of The Revised Statutes ; section 26 becomes section 33; and section 29 becomes section 34, and all these occur under the heading of " Impeachment and other legal proceedings in respect to Patents." Section 28 as to non-manufacture and importation of an invention occurs as section 37 under the words " Forfeiture of Patents," and the jurisdiction of the Minister of Agriculture and of his deputy is continued. The result is that the section (2) enabling a defendant in an action of infringement to plead any fact or default that renders a patent void, immediately precedes that (3) which gives the writ of scire facias " for cause as aforesaid ;" while several (1) Sec. 7., (2) Sec. 33. (3) Soc. 34.
342 EXCHEQUER COURT REPORTS. [VOL. VI 1900 sections intervene between the latter and section 28 TEE which reproduces the provision of section 27 of the QUEEN V. Act of 1872, that a patent should be void for certain THE stated reasons. Again under this statute it seems to GENERAL ENGINEER-me to be doubtful whether the words cited refer to ING CO. OF the causes mentioned in. the 33rd section, or to those ONTARIO. mentioned in the 28th section, or to both. The same Reasons for difficulty exists as that mentioned in connection with Judgment. the Act of 1872. The 37th section of the Act shows clearly that there are facts and defaults that render a patent void which are not grounds for a writ of scire facias ; and that the latter will not lie for all, but only for some of, the causes stated in the 33rd section of the Act. By several amendments of section 37 of The Patent Act (1) the Exchequer Court has, as we have seen, been given jurisdiction in the place of the Minister of Agriculture and his deputy to decide any question as to a patent being void for non-manufacture, or for importation contrary to the statute (2) ; but that does not remove the difficulty, as the jurisdiction is to be exercised by the court upon information in the name of the Attorney-General of Canada, or at the suit of any person interested, and not in a proceeding by scire facias. In the earlier Acts that have been referred to, the words " for legal cause as aforesaid " had reference to certain specified causes, and not to the defences that might have been set up in an action for infringement. In the later statutes the corresponding expression " for cause as aforesaid " does not include all the defences that may be set up in an action for infringement, and it is doubtful whether or not it should be extended beyond the grounds upon which patents are in certain cases declared void by the 28th section of The Patent (1) R. S. C. c. 61. Vict, c. 33 ; and 55-56 Vict. c. 24, (2) 53 Vict. c, 13, s. 2 ; 54-55 s. 6.
VOL. VI.1 EXCHEQUER COURT REPORTS. 343 Act now in force. These grounds, as will be seen by 1900 reference also to sections 7, 8 and 10 of the Act, are, to them briefly :— QUEEN v. (1.) That the grantee had not invented the art, THE GENERAL machine, manufacture or composition of matter ~ or E IVC~INEER- the improvement therein, for which the patent had IN Co. of OcNTARIO. been granted ; R.&So (2.) That the alleged invention was not the proper rnaf~t. subject matter for an invention ; (3.) That it was not new ; but had been known and used by other persons before his invention ; (4.) That it had been in public use or on sale with the consent or allowance of the inventor for more than one year previously to his application for a patent therefor in Canada; (5.) That it was not useful ; and (6.) That the specifications were insufficient and misleading. It certainly is not at all clear that the words men- tioned include the defence created by the 8th section of the Act of 1872 on which the prosecutor relies, and that being the case it seems to me that there should be judgment for the defendant company. There will, under the circumstances, be uô costs to either party. And the right of the Crown or prosecutor to set up in any other proceeding as a ground of defence or attack that the letters patent herein referred to have expired and become void is reserved. Judgment accordingly. Solicitors for the plaintiff: Macmaster k Maclennan. Solicitors for the defendants : Rowan 4 Ross.
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.