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THE Bonn ELECTRIC COMPANY, of
Canada,
Petitioners,
AND
- EDISON ELECTRIC LIGHT COMPANY,
Respondents.

Messieurs Lash, Q. (7., of Toronto; McGibbon, of
Montreal; Curtis, of New York; and Kerr, of Pitts-
burg, Pa., counsel for petitioners.
Messieurs Ilector Cameron, Q. 0., of Toronto; Mac-
Master, Q. 0., of Montreal; and Dyer, of New York,
counsel for respondents.
This is a Petition to the Minister of Agriculture,
hearing date May 1, 1888, to have declared null and
void the patent No. 10,654, granted to Thomas Alva
Edison, on Nov. 17, 1879, “for new and useful im-
provements on electric lamps, and in the method of
manufacturing the same, the title whereof is Edison
Electric Lamp,” on the ground of violation of The Fat-
ent Act, Consolidated Statutes of Canada, Chap. 61,
2
Sec. 37.* On Nov. 16, 1881, an extension of three
months’ time within which to manufacture was granted
to the patentee, on his application to this effect, in
which he alleged that “ having been engaged in intro-
ducing his invention in other countries, he had failed
in manufacturing in Canada, within the two years pre-
scribed by law, owing to the large capital which is
necessary to establish such manufacture.”
By assignment the respondents became the holders
of the patent.
The petition alleged that the patentee and his as-
signees had not manufactured the invention within the
two years prescribed by law, and that the alleged ex-
tension of three months within which to do so had
been obtained by false and willful misrepresentation ;
that the patentee and his assignees had imported the
invention into Canada after the twelve months allowed
by law, and prayed, for these reasons, that the patent
be declared null and void, and the extension above
mentioned set aside and cancelled.
On the application of the petitioners, the Deputy

*SEOTION 37.—-Every patent granted, under this Act, shall be
subject and be expressed to be subject to the condition that such
patent and all the rights and privileges thereby granted shall cease
and determine, and that the patent shall be null and void at the end
of two years from the date thereof, unless the patentee or his legal
representatives, within that period, commence, and, after such
commencement, continuously carry on in Canada the construction
or manufacture of the invention patented, in such manner that any
person desiring to use it may obtain it, or cause it to be made for
him, at a reasonable price, at some manufactory or establishment
for making or constructing it in Canada,—-—and that such patent
shall be void if, after the expiration of twelve months from the
granting thereof, the patentee or his legal representatives or his as-
signee for the whole or a part of his interest in the patent, imports
or causes to be imported into Canada, the invention for which the
patent is granted; and if any dispute arises as to whether a patent
.has or has not become null and void under the provisions of this
section, such dispute shall be decided by the Minister or the deputy
of the Minister of Agriculture, whose decision in the matter shall
be final.
3
Commissioner issued an order upon the respondents’
counsel to produce at the trial all the invoices, ac-
counts, letters and other documents, enumerated in a
certain paper or “ Notice to produce,” previously
served upon them, at the instance of the petitioners, in
order that the same might be used as evidence if re-
quired.
By mutual consent, the trial was fixed for the 13th
November, when the respective counsel, with the wit-
nesses being present, the case was proceeded with.
The respondents’ counsel, in addition. to the general
- denial, by way of preliminary plea, took exception to
the jurisdiction of this tribunal, on the ground, that on
March 31st last, and prior to the date of this petition,
the respondents had taken action against the petition-
ers, in the Superior Court for Lower Canada, at Mon-
treal, praying for damages, and the issue of an injunc-
tion, for infringement of the patent now in question;
that thepetitioners did not answer the action, but on
May 18th, applied for a stay of proceedings in the
action, until the decision on this petition could be ob-
‘ tained, and which application the court had granted.

2. Whenever a patentee has been unable to carry on the con-
struction or manufacture of his invention within the two years
hereinbefore mentioned, the commissioner may, at any time not
more than three months before the expiration of that term, grant to
the patentee an extension of the term of two years on his proving
to the satisfaction of the commissioner that he was, for reasons be-
yond his control, prevented from complying with the above con-
dition.
3. The commissioner may grant to the patentee, or to his legal
representatives or assignee for the whole or any part of the patent,
an extension for a further term not exceeding one year, beyond the
, tWelve months limited by this section, during which he may im-
port or cause to be imported into Canada the invention for which
the patent is granted, if the patentee or his legal representatives,
or assignee for the whole or any part of the patent, show cause
satisfactory to the commissioner, to warrant the granting of such
extension; but no extension shallbe granted unless application is
made to the commissioner at some time within three months he
= fore the expiring of the twelve months aforesaid, or of any exten-
sion thereof.
4
Counsel for the respondents argued, in effect, that
the matters raised in the present petition could be
urged as a defense’ to the action in the Superior Court,
under the 33rd section of The Patent Act, which is as
follows: ‘ “The defendant in such action, may plead
specially as matter of defense, any fact or default which’
by this Act, or by law, renders the patent void; and
the court shall take cognizance of that special pleading
and of the facts connected therewith, and shall decide
the case accordingly.” That it is specially within the
functions-of a court of justice to determine the mat-
ters in issue herein, the court having poWer' to compel
the attendance of witnesses, the production of docu-
ments, to punish for contempt and for perjury, powers
lacking in the Minister of Agriculture, and the Superior
Court for Lower Canada, at Montreal, having been,
seized of this case, before the presentation of this peti-
tion, should not be, and could not be deprived of its
jurisdiction; that it is contrary to the fundamental
principles of justice and to public policy that the Courts
of Justice, in which the fullest investigation could be;
had, and the right of appeal preserved to both parties,
should be ousted of their jurisdiction, and the trial of
the issue transferred to a semi-political tribunal, not
havingth’e power to compel the attendance _ of wit?
nesses, or the production of papers, or punish for con-_
tempt or perjury, and from whose decision there is no
appeal; that the urisdiction of the ordinary courts isi
concurrent with that of th-e'Minister of Agriculture, and
it is a well established principle,"that where there is“;
concurrent jurisdiction, the court1 first seized of the
case is allowed to adjudicate therein, and that the sec-'-
ond court appealed to will not interfere ; that Dru;
Taché had ruled in the case of the Telephone Mama.
featuring Company v. The Bell Telephone Company/4
that the ordinary courts had not cencurrent jurisdiction“:
in this matter, but in this he was in error, and more-l;
over as this vpoint did not arise in that case, there,
being no’litigation before the courts with respect to it;
5
his statement to this ' effect was mere ohitei' dictum ;
and his further statement, that the courts had sus-
tained himin this view of the law, is equally erroneous
-—the decision in the case of Smith v. Goldie in the
Supreme Court Reports, Vol. 9, p. 46, does not declare
the jurisdiction of this tribunal exclusive, but merely
conclusive—that is; where application is made to it in
the first instance, and not as in the present case, where
an ordinary court has already been and is seized of the
case ; that this is the view also taken by Justice OSLER
inthe case of the Bell Telephone ('0. v. The lllinister of-
Agriculture, 17 Ontario Law Reports, p.605, in which
application was made for a writ of prohibition, to re-
strain the Minister of Agriculture from proceeding in a
case then pending before him, on a petition to declare
null and void a patent held by that company; that Dr.
Taché’s ruling, therefore, should not be considered
binding in the present case,~ and that this tribunal
should not entertain the present application, but refer
it to the ordinary courts, constituted for the purpose,
and having all the necessary powers to adjudicate
upon it. I
Counsel for petitioners, contra, that the question of
jurisdiction had already been decided and pronounced
upon," by Dr. Taché, in the case of Barter 'v. Smith, and
and in the Bell Telephone Case, which "was even a
stronger case than this, for in that case there was not
only a case pending between the parties in the High
Court of Justice in Ontario, but the defendants had,
actually pleaded'to the action, whereas in the present
case, the petitioners had not pleaded to the action, but
On petition to that effect, had the proceedings stopped
until the decision of this tribunal could be had; Dr.
Taché in those cases properly decided, that there was‘
no concurrent jurisdiction, but that this tribunal had
exclusive jurisdiction to decide as to the validity of the
patent, in the case of importation or non-manufacture,
and that his decision had been sustained and approved
by every court of- ju'sticet'hat'had Occasion to refer to;
6
it—the Supreme Court, in the case of Smith v. Goldie,
and the Ontario Court of Appeals in the same case ;
the High Court of Justice in Ontario, in the prohibi-
tion case of the Bell Telephone 00., 7 Ontario Reports,
p. 605, in which the court held that the writ would
not lie; and also in the case of the same Bell Tele-
phone 00., for a writ of certiorari to review the decis-
ion of the Minister of Agriculture, and which the
court refused to grant, on the ground that no such writ
would lie, and no review cOuld be had, 9 Ontario Law
Reports, p. 339; also the case of Mitchell v. The Han-
coch Inspirator Company, tried before Dr. Taché, on
reference from the Superior Court for Lower Canada,
in which the judge granted a stay of proceedings, till
the decision of the Minister of Agriculture could be
had on the validity of the patent, under the 37th Sec-
tion of The Patent Act ,' that all these decisions should
be regarded as binding on this tribunal, and as settling
the question of its exclusive jurisdiction in the present
case. I
The Deputy Commissioner stated, that in view of the
large number of witnesses present from the United
States, and other places distant from Ottawa, who were
naturally anxious to return to their homes as soon as
possible, he would not delay the proceedings at this
stage, but would render his decision on this point,
when judgment should be rendered on the merits of
the case.
The evidence was then proceeded with, lasting over
three days, including an admission of facts by the
parties, when the case, by agreement, was postponed
to the 17th December, for argument of Counsel, when
the case was ably argued, at great length, by counsel
on both sides.
The evidence adduced by the petitioners established
in substance : That the patent was granted to Thomas
A. Edison on the 17th November, 1879; that on the
16th November, 1881, an extension of three months
time within which to manufacture was granted; that
7
on the 12th February, 1880, Edison assigned the pat-
ent to “ The Edison Electric Light Co.,” and on the
30th December, 1886, the latter assigned to “ Edison
Electric Light Co. "—the respondents. The lamp con-
sists of a glass globe or bulb, glass tubing, inside
pieces of glass, platinum and copper wires, carbon fila-
ment and brass bottom; all these articles were im-
ported from the United States, from the time the pat-
entee and his assignees began to make the lamps in
Canada, and still continue to be imported; that the
process of making the lamp from these imported ar-
ticles consisted of several operations, such as attaching
the carbon filaments to the leading-in wires—the lead-
ing-in wires having been previously let into the glass
and sealed in ; the glass bulb and tube attached to it,
the air exhausted from the bulb, and connection made
with the brass cap or base to attach it to the socket,
to connect with the circuit, supplying the electric cur-
rent. On the 14th November, 1881, The Edison Elec-
tric Light Co. started a small factory in Montreal,
worked by two men, and the outfit consisted of a small
dynamo, several pumps for producing the vacuum in
the globes, several small glass blowers’ fires, gas fires,
altogether of the value of about $2,000, and com-
menced the manufacture 'of the lamps from the ma-
terials imported from the United States as above
stated; and on the 17th had completed two lamps;
the carbon filaments were put into the lamps in the
condition they were brought in from the United States,
and were not subjected to any further treatment or
process of carbonization after their arrival in the fac-
tory in Montreal. The carbon filaments are made of
bamboo, imported into the United States from Japan,
in the crude or natural state, in strips, and on arrival
at the factory in the United States, they were further
split into smaller strips, the pith removed, and then by
knives or dies, further reduced to the proper size of the
filament; these filaments were then put on a block or
mould packed with carbon, then put into a furnace and
8
baked or carbonized ; this process requires great skill
and labor, and is very difficult, and can only be done
by skilled workmen; they tried to carbonize the fila-
ments in Montreal but could not succeed, as the men
were not skilled in the work. The glass bulbs were
made in the United States from pot glass, the glass
blowers there blowing them by several processes into
the size and shape required. These bulbs were made
expressly for use on the-incandescent lamps, and must
have the same expansion as the platinum, and are not
ordinary articles of commerce; the glass tubing also
must be made from the same quality of pot glass as
the bulbs, so as to have the same expansion ; the
platinum wire also was specially prepared in the
United States for use in the lamps. The employés
were instructed not to sell the lamps to any who did
not use the Edison dynamos or plant, and they ac-
cordingly did not so sell them, and refused to sell to
any not using the Edison plant ; that it was the policy
of the company to do this, as the sale of the plant was
more profitable than the sale of the lamps, the propor-
tion being that where 800 lights were installed the
total price was $12,000, while the cost of the lamps at
$1 each, was only $800, and this had practically the
effect of creating a monopoly for the Edison plant. The
first sale of lamps in Canada was made to the Uanada
00tt0n 00., at Montreal, in December, 1882. The cap-
ital stock of “ The Edison Electric Light 00.” in No-
vember, 1881, was $720,000 or $780,000, the par value
of the shares being $100, but they were then quoted
and selling at from $1,000 to $1,200 per share, or a
premium of $1,000 to $1,100 above par. In January,
1883, the factory in Montreal was closed, and the busi-
ness transferred to Hamilton, and there increased and
more men emplOyed, but there was no change in the
manner of getting out the lamps ; the same articles
were imported, but in larger quantities, the same steps
.of assembling all the parts and putting them together
to complete the lamp were gone through .at Hamilton,
9
as in Montreal; at this time there were 3,800 lamps in
use in Canada, and the annual output was from 8,000
to 10,000 lamps, and was gradually increasing ; the
proportionate cost of labor bestowed in the United
States on the articles sent into Canada, to be used in
the making of the lamps, is $32.50 on every 100 lamps
made; while the proportion of the cost of labor be-
stowed on the lamps in Canada, after the importation
of the articles composing it, is $21.80 per $100 worth
of lamps made.
The respondents admitted the importation of the
glass bulbs, the glass tubing, the platinum and copper
wires, and the carbon filament, and that the importa-
tion continues still, and the evidence they adduced
went to show that these were all raw material; that
they were all ordinary articles of commerce, and could
be used for any other purpose besides incandescent
lamps; that the "carbon filaments, as imported, were
only partly manufactured in the United States, and the
carbonization‘was completed in the Canadian factory,
by the passing of an electric current through them
while a high vacuum was maintained in the lamp bulbs,
thereby reducing them to a pure carbon, and that this
process of final carbonization was necessary to make
a serviceable commercial lamp ; that the glass bulbs
and tubes, after they were imported, passed through
several processes in the factory in Canada, to render
them fit for use in the lamp ; that the platinum was
obtained in the United States, and before being sent
into Canada for use in the lamps was re-melted from
the crude material, and then drawn out into wire, and
slightly alloyed with iridium, so as to make it a little
harder ; and the wire was attached to the carbon and
fitted into the glass bulbs in Canada ; that if the com-
pany had been compelled to manufacture the carbons
in Canada, it would have ruined the business in
Canada; that the platinum wire would have cost two
hundred fold more in Canada, as it requires a special
furnace to prepare it ; that the cost of material in the
10
United States, as imported into Canada, would be in
the proportion of one-third, and the labor in Canada,
two-thirds.
Counsel for the petitioners argued that the evidence
clearly showed that the patentee and his assignees had
not complied with the provisions of f! 726 Patent Act ,'
that they_did not commence‘or carry on in Canada the
manufacture of the invention within the time prescribed
by law, and that they had imported it after the time
allowed by law, and in addition thereto had refused to
sell the invention as they were bound by law to do ;
that they showed bad faith and no intention to comply
with the law from the beginning, as they only started
their factory and began. making the lamps on the 14th
November, 1881, a few days only before the limit pre-
scribed by T/te Patent Act ; then again it is proved
that at this period, when they applied for and obtained
an extension of time, within which to manufacture, on
the ground or pretension of the large capital necessary
to carry on the manufacture, the capital stock of the
Edison Electric Light Co., the then holders of the pat-
ent, amounted to over $700,000, the par value of the
shares being $100, and their market or selling price
was quoted in the newspapers at $1,000 or $1,200, or a
premium of from $51,000 to $1,100 above par, while it is
proved that the whole capital or plant they had in
Canada at this time was only $2,000 ; this showed their
utter want of good faith, and the misrepresentation
amounting to fraud, practiced upon the Minister of
Agriculture, to obtain an extension of time; that they
refused to sell their lamps unless in connection with
their own plant, thus creating a monopoly for their
dynamos or plant, which they had no right to do by
law, which does not authorize or justify the imposing
of conditions or restrictions upon.the purchaser, as to
the use of the invention when purchased by him ; that
the subsequent process of carbonizing the filament,
after it was put into the globe and subjected to the
passage of an electric current while a high vacuum was
11
maintained, was no part of the patent, and could not be
claimed for it; that the labor expended in the United
States upon the articles before they were imported into
Canada amounted, on the 66,500 lamps proved to have
been made up to the present time, according to the
proportions of cost proved, would amount to $30,000,
which was so much loss to the Canadian laborer ; and
the manufacture of these lamps was increasing from
year to year.
. For the respondents it was contended that the pat-
entee and his assignees had in every respect complied
with the terms of The Patent Act ,' they had com-
menced the manufacture within the time prescribed by
the act, and had only imported the component parts of
the lamp in the raw state or as raw material and ordi-
nary articles of commerce ; that there was no absolute
proof that they had refused to sell exceptin connection
with the Edison plant, and even if this were proved, it
was no violation of the act, as the law did not, and
could not, reasonably be construed to compel them to
sell their lamps to opposition companies, who would
run them on the are or other plant not suited to the
Edison incandescent lamp, and thereby injure or de-
stroy the reputation of the lamp; they were always
willing and ready to sell to those who,v would do justice
to the lamp, and act fairly and honestly in giving it a
fair trial; with regard to importation, it is proved that
the glass globes and carbon filaments could not be
made in Canada, and even if they could be made it
would be at such a ruinous cost and expense that the
business of manufacturing the lamps in Canada would
have to be abandoned; that the law did not contem-
plate any such unreasonable and unjust condition as
this ; that in any case the importation of these articles
was a small matter in comparison with the cost of labor
expended on the manufacture of the lamps in Canada ;
that, moreover, they were merely ordinary articles of
commerce, and not the invention or subject of the pat-
ent ;_ that in two cases recently decided in the Supreme
12
Court, and not yet reported, the Ayer- case and the
Grinnell case, in which the defendants were sued under
the Uttstoms Act, on the ground that they imported
certain ingredients or articles, and afterwards assembled
or put them together and manufactured an article upon
which a higher duty was payable, the Custom authori-
ties claiming that they were liable for the higher duty,
the Supreme Court decided that the articles or ingre-
dients were what they were when they crossed the
boundary line, and were not liable for the higher duty
on the article into which they were manufactured after
their entry into Canada ; that the imported articles in
the present case, could not be held to be the invention
patented, and the patent could not, therefore, be de-
clared void for contravention of The Patent Act.
.___———-
DECISION.
The preliminary plea of the respondents again raises
the question of the jurisdiction of this tribunal, on the
ground that, by the 33rd and 37th sections of The
Patent Act, above quoted, the ordinary courts of
justice have concurrent jurisdiction with the Minister
of Agriculture and the Superior Court for Lower
Canada, at Montreal, having been first seized of the
matter in dispute between the parties here, the petition
should not and could not be entertained, Superior
Court, in which the proceedings originated, being the
proper tribunal to adjudicate therein. Upon reading
these two sections of the Act concurrently, the mean-
ing and intention of the law seem plain, consistent and
comprehensible, and admit of the sole interpretation
and conclusion, that in an action at law for infringe-
ment of a patent, the defendant may plead in defense,
any fact or default which may render the patent void,
and if the defence invoke the invalidity of a patent on
the ground of illegal importation or non-manufacture,
this must be done by pleading the only fact which, by
13
the 37th section, establishes it—the decision of the
arbiter therein specified, the Minister of Agriculture or
his Deputy, whose decision being final, no other tri-
bunal can establish such fact or default. This view
was held by Mr. Taché in the decisions rendered by
him, and referred to at the argument, and in which he
declared the jurisdiction of the Minister of Agriculture
in this matter to be exclusive, and this view or finding
has been sustained by all the judicial tribunals that
have had occasion to refer to it. In the case of Smith
128. Goldie in the Supreme Court, the summary at the
head of the report, if not to be considered as of the
substance and part of the report, must assuredly be ac-
cepted as correct and accurate interpretation thereof,
contains the following words in paragraph 3 :—-“ The
Minister of Agriculture or his Deputy, has exclusive
jurisdiction over questions of forfeiture under the 28th
(now 37th) section of The Patent Act ,' ” and Henry,
J. in rendering judgment in the case, upon referring to
Dr. Taché’s decision in Barter vs. Smith says :-—“ Hav-
ing well considered the case as presented before him,
I would have come to the same conclusion as he did.
I think the law as laid down and explained by him, in
his exhaustive, and, I will add, able judgment, cannot
properly be questioned. I fully concur in his conclu-
sions, as I do also in his reasons.” Again, by the Su-
perior Court at Montreal, as reported in the Mitchell
and .Uancocle Inspirator Co. case, p. 2, where proceed-
ings had been instituted for infringement of the patent
in that court, and the special pleading was met by de-
murrer to the effect that the nullity caused by violation
of the 28th (now 37th) section of The Patent Act, can-
not be tried by any other court than that of the Min-
ister of Agriculture, upon which a stay of proceedings
was asked for and granted, in order to obtain the decis-
ion of this tribunal. Again, in this present case, the
Superior Court, at Montreal, has granted a stay of pro-
ceedings until the decision of this tribunal shall have
been obtained on the question at issue.
14
I, therefore, hold that the Minister of Agriculture, or
his deputy, has exclusive jurisdiction as to the question
of the validity of the patent under the 37th section of
The Patent A ct, and cannot divest himself of it by
relegating it to any other tribunal whatever.
Having thus disposed of the preliminary plea, I will
now consider the case on its merits.
The first consideration which presents itself is, to
ascertain the nature of the invention claimed by :the.
patent, the claims of which are :—
Ft'rst. “ An electric lamp for giving light by incan-
descence, consisting of a filament of carbon of high re-
sistance made as described, and secured to metallic
wires as set forth.”
Second. “ The combination of_carbon filaments within
a receiver made entirely of glass through which the
leading wires pass, and from which receiver the air is
exhausted for the purpose set forth.”
Third. “ A coiled carbon filament or strip arranged
in such a manner that only a portion of the surface of
such carbon conductOr shall radiate light as set forth.”
Fourth. “ The method herein described of securing
the platina contact wires to the carbon filament and
carbonizing of the Whole in a closed chamber, substan-
tially as set forth.” _ _
It is manifestly clear that the essential feature or
element of the invention, as particularly described in
the first and second claims is—a carbon filament of
high resistance, this is the novelty which the inventor
has contributed to the art of incandescent lighting, and
it cannot be disputed by any one having the slightest
acquaintance with patent law, that the carbon filament
as imported by the patentee and his representatives,
the respondents, and which they still continue to im-
port, is claimed in and covered by the patent, or that
any one who should use it, without the permission or
15
consent of the respondents, would render himself liable
to them in an action for infi'ingement of the patent.
The process of further carbonizing the filament after
it is introduced into the bulb, by passing an electric
current through it while a high vacuum is maintained,
as described by some of the witnesses for the respond-
ents, as well as by Mr. Edison himself, is not any-
' where described or claimed in the patent, and forms no
part of it ; on the contrary, it is the subject of another
patent, obtained subsequently, by the same inventor,
Mr. Edison, on the 5th July, 1881, under the number
13,057, the fourth and fifth claims of which are as fol-
lows:
Fourth. “ The method of treating carbon conductors
for electric lamps, consisting in enclosing the con-
ductor in a glass case or globe, exhausting the air
therefrom, heating the conductor by an electric cur-
rent, and then hermetically sealing the glass case or
globe.” .
Fifth. “ The method of treating carbon conductors
for electric lamps, consisting in closing the conductor
in a glass globe, or exhausting the air therefrom, heat-
ing the conductor by an electric current to a higher
degree than that at which it is intended to ordinarily
' raise the conductor in use, and then hermetically seal-
ing the glass case or globe.”
I Here, then, the process is fully and explicitly de-
scribed and claimed, and the use or employment of it
cannot be invoked or relied on by the respondents to
sustain the patent now in controversy.
The next feature of importance, after the method of
securing the platina contact wires to the carbon fila-
ment, as set forth in the fourth claim of the patent in
contestation, is the glass globe or bulb referred to in
the third claim, and it is abundantly proved and ad-
mitted by the respondents that they have always, and
still continue to import these, and have never manu-
factured them in Canada.
Some of the witnesses for the respondents state that
16
the carbon filaments and the glass bulbs are exceed-
ingly difficult to manufacture, requiring great skill and
judgment, and that they cannot be made in Canada, and
that there is only one factory in the United States
where they can be made to the satisfaction of the re-
spondents, but this seems irreconcilable with the state-
ment of these same witnesses in calling these articles
raw material. Mr. Edison himself, in his affidavit, re-
ferring to the glass bulbs, says : “ They are'strictly of
the character of raw material,” and in view of the fact
also that the records of the Patent Office show that en
the 23rd November, 1882, Mr. Edison obtained a pat-
ent for the process of manufacturing glass bulbs for
incandescent lamps from pot glass. The allegation of
inability to manufacture in Canada is no plea in de—
fense of a Canadian patent, and it would be a singular
misconception of the spirit of the law if a patentee,
probably holding a patent for his invention in the
United States, or other foreign country, should sup-
pose he could hold to his Canadian patent, declare his
inability to manufacture it in Canada, ignore the fact
he was thereby preventing any one else from engaging
in the industry, and defeating the very object and in-
tention of The Patent Act, enacted to encourage and
protect home labor and manufacture.
The bamboo cane was, and continues to be, imported
from Japan into thc United States, by the respond!
ents, in its natural state, and was there, by, a series
of manipulations or processes, reduced to a fila-
ment of required size and proportiOn, and was then
further subjected to the very difficult and delicate
process of carbonization, and in this state was im-
ported into Canada expressly for use in the lamps.
The platinum, another component part of the inven-
tion, was, and still-is, imported into the United States
from Russia, by the respondents, and was there melted
and alloyed with iridium, drawn into wire, and other-
wise specially prepared, and then imported into
Canada for use in the lamps.
17
I find that every essential feature, element and com-
ponent part of. the-invention was, and still continues to
be, imported into Canada by the respondents, in a
manufactured state, for the especial purpose of assem-
bling or putting them together, so as to make an in-
candescent electric lamp, such, as that described and
claimed in the patent held by them, and now in dis-
pute.
The two cases of Ayer and GrinneZZ in the Supreme
Court, referred to at the argument, but not yet re-
ported, do not apply to the present case, as those two
suits were brought, under the Customs Act, in virtue
of which the defendants had a perfect right to import
the articles separately, and if afterwards, by compound-
ing or combining these together, they manufactured an
article or commodity, of greater commercial value, sub-
ject to a higher tariff duty, they contravened no sec-
tion of the Customs Act giving them the exclusive
right to manufacture, on condition that they should
not import, such as that in The Patent Act, which gives
the inventOr the exclusive right to manufacture his in-
vention, on condition that he shall not import it ;
there is, therefore, no analogy between those two cases
and the one now under consideration.
I therefore hold that the patentee and - his repre-
sentatives have imported into Canada since the 17th
day of November, 1880,- and still continue to import,
the various elements and parts comprising the inven-
tion claimed in the patent N 0. 10,654, in a manu-
factured state, and that they have not at any tlme
since the date thereof manufactured the invention in
Canada.
In view of the above, I do not consider it necessary
to do more than refer to the other point raised in the
case—that of refusal to sell, and even if I had to pro-
. nounce upon this point, it is more than probable I
would entertain a view adverse to that ably contended
for by the respondents.
Considering that the Commissioner of Patents is pre-
18
sumably the parent and natural protector of patents,
and shOuld extend a liberal interpretation to matters
urged in their defense, consistently with a just appre-
ciation of public interests, and in view of the impor-
tance of this case, and the large interests involved, I
have bestowed upon it all the care, study and consider-
ation which my time and ability permitted, in the
endeavor to arrive at a sound, just and equitable con-
clusion.
I accordingly decide that the Patent granted to
Thomas Alva Edison, on the 17th November, 1879,
under the number 10,654, for the Edison Electric Lamp
has become null and void, under the 'provisions of the
37th section of The Patent Act.
It. POPE,
Deputy Commissioner of Patents.
Department of Agriculture,
Patent Office,
Ottawa, 26th February, 1889.
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