NOTES
The Presumption of Validity in Canadian Patent Law
The role of the presumption in our legal system can best be
understood in the light of the fact-finding process, for it permits
a party to prove to the court facts crucial to his case merely by
establishing the existence of other facts, from which the court will
deduce the existence of the primary facts which he alleges. Article
1349 of the Code Napolgon provides that:
Les pr6somptions sont des consequences que la loi on le magistrat tire
d’un fait connu h un fait inconnu.
The implications of this definition’ are important, for they indicate
that, in strict legal terms, it is not proper to speak of presumptions
with respect to a question of law. On the contrary, the term
“presumption” is by definition confined to the fact-finding process.
Although it follows from this line of reasoning that section 48 of
the Patent Act 2 does not create a presumption in favour of a patentee
since the issue as to the validity of a patent is ultimately a question
of law and one for the courts to decide, there is no doubt that the
section, by providing that the patent is “prima facie valid”, places
a burden upon a litigant challenging the right of the patentee.
At the outset, it must be emphasized that the term “presumption”
will be used throughout this note in its conventional sense as opposed
to its narrow legal meaning. That is to say, the term will indicate
that, when it applies, a presumption has the effect of placing upon
one party an onus which he would otherwise not have to bear, and,
conversely, alleviating the burden of the person opposing him.
I
Section 48 of the Patent Act provides in part that, once a patent
has been issued:
… it shall thereafter be prima facie valid and avail the grantee and his
legal representatives for the term mentioned therein…
1 A similar definition appears in Halsbury’s Laws of England, 3rd ed., vol. 15,
(London, 1956), p. 343: “The nature of a presumption of law is that the court
treats as established some fact of which no evidence has been given…”
According to Nadeau et Ducharme, TraitM de Droit Civil du Qudbeo, t. 9,
(Montr6al, 1965), p. 437; “La pr6somption l~gale est celle qui est 6tablie par
la loi, c’est-h-dire celle que le l~gislateur a pris soin de tirer de certains faits.”
2 R.S.C. 1952, c. 203.
No. 4]
NOTES
While upholding an action for infringement of three patents
relating to power-driven washing machine wringers, Thorson, P.,
commented upon both the scope and the effect of the presumption.3
With respect to the former, he cited 3a remarks which he had
previously made in Unipak Cartons Ltd. V. Crown Zellerbach Canada
Limited,4 to the effect that:
is
the statutory presumption is not confined to the attribute of inventiveness
but extends to the other attributes that an invention must have if it
to
be patentable under the Act, such as novelty and utility. The three
attributes of patentability, namely, novelty, utility and inventiveness, are
all presumed to be present in an invention for which a patent has been
granted under the Act until the contrary is clearly shown.
In commenting upon the effect of the presumption, the learned
President referred to the comment he had made in McPhar Engi-
neering Company of Canada Ltd. v. Sharpe Instruments Limited:5
He [the patentee] need not prove the existence of these attributes, for he
starts with a statutory presumption of their existence in his favour and
the onus of showing their non-existence lies on the alleged infringer of
the patent. The enactment of the statutory presumption of validity effected
an important change in Canadian patent law and marked a substantial
advance in the protection of a patentee’s rights.
Five years earlier in O’Cedar of Canada Limited v. Mallory
Hardware Products Limited,6 Thorson, P., described the duties of
the court, in the light of section 47 of the Patent Act, 1935, 6a as
follows:
Instead of having to determine that the invention covered by the patent
in suit does involve the exercise of inventive ingenuity, which is presumed
until the contrary is shown, its task is the simpler one of deciding whether
the person attacking the patent has succeeded in showing that the invention
covered by it was merely an obvious workshop improvement. 7
What, then, is the nature of the burden contemplated by section
48? While it is true that the presumption being embodied in a statute,
can properly be called a presumption of law, it is submitted that its
real basis emanates from a factual circumstance: the issuance of
3 Lovell Manufacturing Company v. Beatty Bros. Limited, (1962), 23 Fox
Pat. C. 112.
3a Ibid., at p. 136.
4 (1960), 20 Fox Pat. C. 1, at p. 34.
5 (1960), 21 Fox Pat. C. 1, at p. 27.
O (1.955), 15 Fox Pat. C. 134, at p. 152.
Ga25-26 Geo. V, S.C. 1935, c. S2.
7The reader is referred to Langlois v. Roy, (1941), 1 Fox Pat. C 138, at p.
159, wherein similar comments were made (the presumption, however, was
In Visirecord of Canada Ltd. v. Malton, (1958), 17 Fox Pat. C.
defeated).
157, at p. 182, a “borderline” action for infringement was upheld by virtue of
section 48 of the Act.
McGILL LAW JOURNAL
[Vol. 14
a patent. In effect, Parliament is merely directing the courts to
accept, as a working hypothesis, the proposition that the Patent
Office acted correctly when issuing the patent. That being the case,
it follows that the weight of the presumption as contemplated by
section 48 must be constant s from case to case, because the secondary
facts giving rise to it do not vary; once the patentee proves that
the patent has been issued, that in itself gives rise to the pre-
sumption.
In R. v. Uhlemann Optical Company, Thorson, P., contended
that the onus thus created “is not an easy one to discharge.” 9 This
decision was criticized in an editorial note in the Fox Patent Cases:10
With respect, it is suggested that Thorson, P., went too far. A prima facie
presumption is a rebuttable presumption or praesumptio juris. As such,
it takes effect prima facie, but may be displaced by evidence.
Nowhere, however, did the President state, or even imply, that the
presumption could not be displaced by evidence. On the contrary,
he makes it clear that the burden can indeed be displaced, although
it may not be “easy” to do so.
Did the learned judge go “too far” in contending that the onus
is “not an easy one to discharge”? It is submitted that since patent
officers possess an expertise which the courts do not, it follows that
their decisions should prevail unless clear and unambiguous evidence
is adduced to the contrary. This is, however, contingent upon the
readiness of the courts to investigate the circumstances in which
the patent was issued. The state of the art before the officer,’ as
well as questions relating to error or negligence, on his part, are
highly relevant in this context. Should, however, the court find that
SHence the writer respectfully disagrees with Noel, J., who in DeFrees
and Betts Machine Co. v. Dominion Auto Accessories Ltd., (.1963), 25 Fox Pat. C.
58, stated, at p. 79, that in his opinion, “whether the presumption of validity
is a heavy or easy one to displace remains a question of fact in each case.”
It is submitted that the weight of the presumption, whether it be heavy or
slight, should be constant in the mind of each judge, for it arises from the
same fact. What Noel, J., should have contended was that whether in fact
the presumption is displaced remains a question of fact to be determined in
each case.
9 [1,950] Ex. C.R. 12, at p. 161, subsequently cited by Thorson, P., in
McPhar Co. v. Sharpe Instruments, (1962), 21 Fox Pat. C. 1, at p. 27. See also
Alloy Steel and Metals Company v. A-i Steel and Iron Foundry Ltd., (1963),
25 Fox Pat. C. 157 wherein, at p. 161, Cameron, J., depicted the presumption
in the same terms. See also, for remarks to the contrary, DeFrees and Betts
v. Dominion Auto Accessories Ltd., (1963), 25 Fox Pat. C. 58, at p. 79 (Noel,
J.): “Validity should be decided not on the basis of a heavy or difficult onus
to discharge but merely on the weight of the evidence.”
10 Note to DeFrees and Betts Machine Co. v. Dominion Auto Accessories Ltd.,
(1963), 25 Fox Pat. C. 58, at p. 61.
No. 4]
NOTES
a thorough and competent examination was given in the absence
of vitiating circumstances, then it would seem reasonable that, as
a matter of policy, a strong presumption should prevail.
This rationale appears to be substantiated when it is remembered
that “invention” is not susceptible of precise legal treatment. On the
contrary, it has been said to defy definition.”
In the words of
Tomlin, J.,12 cited with approval by Rinfret, J., in the Uhlemann
Optical case :13
Nobody, however, has told me, and I do not suppose anybody ever will tell
me, what is the precise characteristic or quality the presence of which
distinguishes invention from a workshop improvement. Day is day, and
night is night, but who shall tell where day ends or night begins?
Could it not be said that these words indicate that the critical
issue is essentially discretionary in nature? That being the case, it
follows that experience and expertise are more important qualifi-
cations than a trained legal mind relatively unfamiliar with crucial
details in a highly technical discipline.
Ultimately, then, it would appear that the meaning which one
chooses to infer from section 48 of the Patent Act is an issue of
policy, a question of the philosophy which one may hold as to which
public bodies are best equipped to determine rights and liabilities
in specific cases. Kirby obviously prefers the courts, for he states:
How can we possibly delude ourselves that we can afford the luxury of a
strong presumption of validity when the Patent Office facilities cannot
even ensure a moderate standard of novelty examination?14
although he fails to address himself to the critical
the courts in a position to do a more thorough job?
issue: are
In the same article, Kirby offers a textual interpretation of
section 48 to substantiate his argument, while at the same time
rebutting Thorson, P.’s statement that the burden therein con-
templated is not “an easy one to discharge”. He states that: 15
To make the onus heavy was surely never the intention of the statute
which clearly states that the presumption is “prima facie”, which term is
translated by my dictionary as “on the first view”. I suggest that the
choice of this wording directly suggests a weak presumption, not a strong
one that is hard to overturn…
It must be remembered, however, that section 48 applies to two
preconditions, both of which must have been fulfilled before it can
be said that a patent has been validly issued. Firstly, the proceedings
at the Patent Office must have been conducted with competence and
11 Terrell on Patents, 7th ed., (London, 1961),p. 71.
12Samuel Parkes & Go. v. Cocker Bros., (1929), 46 R.P.C. 241, at p. 248.
13 [1952] 1 S.C.R. 143, at p. 152.
14 The Presumption of Validity in Patent Law, (1960), 32 C.P.R. 1, at p. 5.
15 Ibid., at p. 9.
McGILL LAW JOURNAL
[Vol. 14
impartiality, in the absence of fraud on the part of the patentee.
Secondly, the issuance must be correct in law. The failure of either
of these conditions defeats the presumption. Hence, can it not be
argued that when the first of these is not challenged the burden
increases, and indeed, is “not easy to discharge”?
The statement of the learned President is however, with respect,
open to criticism in that he implies that the onus is, in all cases,
a difficult one to discharge. It is submitted that this proposition
is untenable as a general rule, without reference to the facts of
specific cases. Thus the presumption could be peremptorily rebutted
by showing mistake in issuance, 16 or fraudulent misrepresentations
by the patentee.’ 7
In other cases, where the question before the court involves little
or no discretion, it is difficult to see how the presumption can have
any marked effect. This situation appears to be analogous to the
situation in which a plaintiff finds himself after judgment has been
rendered in his favour by a court of first instance. If the litigious
issue was essentially a question of fact, then he might argue in
appeal that the finding of the trial judge must be presumed correct,
unless gross error is clearly evident. If, however, the case turned
on a strictly legal question, it is only open to him to contend that
the decision appealed from is correct in law. The presumption has
little or no role in this context.
By way of example, let us imagine a case in which a claim is
attacked on the grounds that it is so broadly expressed that, as a
result, it includes matters not embraced by the invention. While the
courts will construe the claim so “as to afford the inventor protection
for that which he has actually in good faith invented”’18 it is clear
that the rules applicable in such circumstances are canons of con-
struction, not principles of presumption. Although the latter may
find their source in a statutory provision, they are more concerned
with factual, or legal, questions involving an element of fact or
discretion, than they are with strictly legal issues.
It follows from the above analysis that the writer would disagree
with the unqualified contention of Thorson, P., in Ernest Scragg
& Sons v. Leesona Corp.,19 wherein he stated that:
… the onus of showing that a patent is invalid -lies on the party attacking
it, no matter what the ground of attach may be.19a
‘6 Patent Act, sec. 55(2).
“‘mbid., sec. 55(1).
18 Western Electric Company v. Baldwin International Radio of Canada,
[1934] S.C.R. 570, at p. 574.
19 (1964), 26 Fox Pat. C. 1, at p. 74.
39a Emphasis added.
No. 4]
NOTES
It is submitted that, when the generality of this statement is
read with the President’s other comments to the effect that the onus is
not easy to discharge, there results a sweeping proposition which is
unworkable in the light of specific cases which may be before the
courts.
II
While it is difficult to state with assurance, it might well be
that there has been initiated a trend away from the onerous burden
espoused by Thorson, P. It would appear that the bulk of judicial
opinion which appears in the most recent cases does not concern
itself with the specific quality of the presumption embodied
in
section 48. Rather, it has been deemed adequate to state that the
impugned patent is presumed valid in the absence of ‘a “preponderance
of evidence”, 20 of “proof to the contrary”,,21 or of “evidence that
satisfies the court that the patent is invalid”.s2 There is even one
case which indicates, by implication, that the onus must be borne by
the petitioner himself, in an application for an interlocutory injunc-
tion, to adduce a prima facie case in favour of the invention.2 3
In the light of the remarks of Lord Denning in the Blyth case,24
it is interesting to note a comment by Thorson, P., which is in
direct opposition to Denning’s comprehension of the word “satisfied”.
Thus the learned President has stated that :25
Although the presumption of validity thus created is only a prima facie
one it is reasonable to assume that Parliament intended that its provision
for validity should be a substantial one… The evidence required to rebut
the presumption must be more than “some evidence”. It must be credible
evidence and substantial enough to satisfy the court that it is invalid.
It seems clear from this comment that Thorson, P., would include
2 0 Rhone-Poulene v. Gilbert, (1967), 35 Fox Pat. C. 174, at p. 210, per
Thurlow, J.
2 1 Glacite Ltd. v. North Land Manufacturers Ltd., (1967), 35 Fox Pat. C.
141, at p. 142, per Batshaw, J.; The Norwich Pharmacal Company v. Bren
Chemical, (1966), 33 Fox Pat. C. 113, at p. 118, per Owen, J.
22 Union Carbide v. Trans.Canadian Feeds, (1966), 32 Fox Pat. C. 145,
at p. 150. In an interesting footnote, Jackett, P., explains his usage of
the word “satisfies” by referring to the case of Blyth v. Blyth, [1966] 1 All
E.R. 524 wherein, at p. 535, Lord Denning stated that: “It then becomes plain
that the word ‘satisfied’ deals only with the incidence of proof, not with the
standard of proof. It shows on whom the burden lies to satisfy the court,
and not the degree of proof which he must obtain.” See also Burns and Russell
of Canada Ltd. v. Day & Campbell Ltd., (1967), 48 C.P.R. 207, at p. 219, per
Gibson, J.
23 Kusters and Farrell Corp. v. Beloit Sorel Ltd.,
(1967), 49 C.P.R. 274,
at p. 275.
24 See supra footnote 22.
25 Ernest Scragg & Sons v. Leesona Corp., (1964), 26 Fox Pat. C. 1, at p. 75.
McGILL LAW JOURNAL
[Vol. 14
in his definition of “satisfy” the extent and nature of the presumption,
as well as designating who must bear it.
Conclusion
While an examination of the law in Canada tends to indicate
a real increase in the rights of the patentee, it should be remembered
that the great majority of favourable statements have been expounded
by Thorson, P. That being the case, other decisions, and particu-
larly the most recent judgments rendered within the last two
years, should not be overlooked, where questions as to the nature
and extent of the presumption were curtly dismissed, if even con-
sidered at all.26 Regardless, however, of the specific weight which
one may attach to the presumption, there is no doubt that it plays
a substantial role in the fact-finding mission, for at the very least
it casts a burden upon a party pleading the nullity of a patent; a
burden he, as defendant, would otherwise not have to bear.
It should also be remembered that the presumption, although
it arises
statutorily expressed, nevertheless has a factual basis:
merely because a patent has been issued. Hence it is submitted that
the presumption should not be limited to the “grantee and his legal
representatives”, 27 but should also extend to assignees of the right.
Were this not so, an anomalous situation would arise in circumstances
in which a patentee assigns a one-half interest, and the two co-
owners subsequently sue a third party for infringement. It would
be incumbent upon both one of the plaintiffs (the assignee), and
the defendant (with respect to the original grantee) to make proof
of the validity, or the invalidity, of the patent. Should neither
party be able to prove his case, then the court would be compelled
to render a judgment in favour of the patentee while at the same
time denying compensation to the assignee.
While it might be argued that the plaintiff-assignee must first
allege and prove the validity of the patent, it is submitted that,
on policy grounds, the courts should hold that a presumption of
fact arises in these circumstances in accordance with article 1238
C.C., even though the assignee may not be contemplated by section
48 of the Patent Act. Since the great majority of patents are valid,
it would appear perfectly logical for the court to presume the validity
of any particular patent, unless the contrary be proved.
David CAYNE 0:::
26 See supra footnotes 21, 22 and 23.
27As provided in section 48 of the Patent Act.
* B.A., B.C.L. Currently a candidate for the LL.M. degree at the University
of California at Berkeley.
