Professor Branestawm wins a temporary reprieve

The IPKat reported earlier this year (here and here) on two decisions made at the UK-IPO relating to patent applications made in the name of Blacklight Power, Inc.  The later of these decisions resulted in refusal of two of Blacklight's applications on the grounds that the claimed inventions relied on an unproven, and probably wrong, scientific hypothesis [the IPKat is very reluctant to use the word 'theory' here, which in his view has quite a different meaning], and did not therefore comply with sections 1(1)(c) (industrial applicability) and 14(3) (sufficiency).

Blacklight appealed the decision to the Patents Court.  The judgment of Mr Justice Floyd was handed down earlier today, and has found its way into the IPKat's paws thanks to a friendly barrister (update: the judgment is now available from BAILII here).   

The appeal centred on whether the Comptroller should refuse applications where there is doubt regarding an issue of fact.  Usually this would be about establishing an inventive step, which often relies on determining what the hypothetical skilled person would know and do.  In some circumstances, where there is a doubt, the applicant should be shown the benefit of this doubt, particularly in cases where a full fact-finding exercise, not necessarily available to a patent examiner, would be required.  Floyd J put it as follows:

"It is not the law that any doubt, however small, on an issue of fact would force the Comptroller to allow the application to proceed to grant. Rather he should examine the material before him and attempt to come to a conclusion on the balance of probabilities. If he considers that there is a substantial doubt about an issue of fact which could lead to patentability at that stage, he should consider whether there is a reasonable prospect that matters will turn out differently if the matter is fully investigated at a trial. If so he should allow the application to proceed.

I think this approach to the consideration of objections to patentability is in accordance with the statutory framework. The examiner will first raise an objection and put it to the applicant. The applicant then has an opportunity of persuading the Comptroller that his basis for considering that the objection applies is not sound. If the applicant does not persuade him to withdraw the objection he may refuse the application (section 18(3)). But at that stage he should consider whether, because there is a substantial doubt about an issue of fact, there is a reasonable prospect that matters may turn out differently at a trial, when there will be a full exploration of the matter with the benefit of expert evidence. If there is such a reasonable prospect he should allow the matter to proceed to grant. It goes without saying that mere optimism and a reasonable prospect of matters turning out differently are not the same thing. The reasonable prospect must be based on credible material before the Office. Macawberism [sic; see here for a helpful definition], here as elsewhere, does not provide any basis for supposing that anything helpful will turn up. Moreover the greater has been the opportunity for the applicant to produce such material at the application stage, the smaller scope there is for supposing that giving him the benefit of the doubt will lead to a different conclusion." (paragraphs 34-35)

This conclusion was apparently also supported by section 3.69 of the Office's work manual, which states: "If expert evidence would be required for him to judge whether the applicant's reply to an objection establishes that there is invention, only then must the applicant be given the benefit of the doubt".  

In this case, the hearing officer was not provided with expert opinion as such, but with a mass of material from the applicant.  This was in the form of 116 scientific papers relating to experiments on the so-called "Grand Unifying Theory of Classical Quantum Mechanics" (or GUTCQM for short), mostly written by Blacklight's founder and chief boffin, 'Dr' Randell L. Mills.  The applicant (represented by Mr Henry Ward) argued that this meant the 'balance of probabilities' test the hearing officer used was not right:

"Mr Ward’s principal argument on this appeal for Blacklight was that the Hearing Officer had simply tested the evidence before him on the balance of probabilities. As I have already indicated, it was no part of Blacklight’s case on the appeal to argue that, applying that standard of proof, the Hearing Officer was not entitled to arrive at the conclusion which he did. Rather, Blacklight’s case was that the Hearing Officer applied the wrong standard. He ought to have considered whether the invention was clearly contrary to established physical laws. The proper test, so Mr Ward submitted, was whether there was no reasonable prospect of Blacklight showing that the GUTCQM was correct." (paragraph 41)

This argument seemed to do the trick, as Floyd J then stated:

"I accept the first limb of Mr Ward’s submission, namely that the Hearing Officer did fail to consider whether the evidence adduced by Blacklight gave rise to any reasonable prospect that the applicants’ theory might turn out to be correct. The Hearing Officer did not, at least on the face of his decision, turn his mind to the question of whether the applicant should be given the benefit of any substantial doubt." (paragraph 44)

Floyd J therefore proposed that the applications were remitted to the hearing officer "for consideration of the following question, namely whether there is a reasonable prospect that on a full investigation with the benefit of expert evidence GUTCQM will turn out to be a valid theory."  Regular readers will know that the IPKat thinks this possibility is about as likely as the existence of the Flying Spaghetti Monster or Bertrand Russell's celestial teapot but, as with all unproveable theories, you can never know for sure.  The IPKat looks forward to seeing what the hearing officer makes of these applications the second time round.  

Postscript: To see how these applications are now faring in parallel proceedings at the EPO, the latest examination report, and reply, can be viewed on epoline here (the other application has not yet been examined).  For yet more entertainment, a final rejection has very recently issued on one of Blacklight's corresponding US applications, US 10/552,585; go to the USPTO's PAIR site to see it.