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Wednesday, 16 November 2005


2006 has arrived early ...

... for Sweet & Maxwell's Reports of Patent Cases. It might be only half way through November, but issue 1 for 2006 has already been published. It's a bit skinny, containing just one case - the fascinating ruling of Judge Michael Fysh QC in the street lantern dispute of Woodhouse UK v Architectural Lighting Systems on the meaning of the "informed user" in design law (this case was blogged by the IPKat here).

... but not in time for Mr Thompson

The IPKat just found this little morsel of patent case law on the Butterworth subscription site All England Direct: it's the Patents Court decision today of Mr Justice Patten in Thompson v Patent Office.

Thompson applied for a patent in respect of an invention entitled ‘A means for purveying energy for the future’. The deputy director refused the application on the ground that the invention was incapable of industrial application because it simply did not work. Thompson appealed on the ground that patent law, as it stood, prevented the Patent Office from processing any application claiming either (a) perpetual motion or (b) means for creating energy, because it would be against patent law to do so.

Patten J dismissed Thompson's appeal. He held that the deputy director’s decision was clearly right and was not open to challenge. The Patent Office had to operate within the bounds of science as known; nor was it able to rewrite the laws.

The IPKat's misgivings about the refusal to grant such patents are sufficiently known and need not be repeated. Scientific certainties of bygone eras have been refuted, so why should we expect the laws of science to be 'binding' in the sense that legal laws are?

Eric's history of perpetual motion here
Museum of Unworkable Devices here
Something else that works in theory but not in practice here


Anonymous said...

If a patent application claims a device that does not work, then the specification does not meet the requirements of sufficiency, so the application should surely be refused on that ground alone. In EPO problem/solution analysis, the technical problem is not solved, and so the application also lacks inventive step. I don't think there needs to be any special treatment for applications contravening the accepted laws of physics: the standard patentability criteria are simply not met.
Darren Smyth

Caroline said...

Quite so. In fact the patent office is more than generous in these cases. Section 1 of the Patents Act says that the invention must be novel, comprise an inventive step and be industrially applicable in order for a patent to be granted. As with novelty and inventiveness, the patentee is free to argue his case. See for example BL 0/152/99, Mr Stott's application, where the hearing officer viewed a prototype and a video of the claimed machine in action. The patent office view is simple- you say it works, so prove it and we'll give you a patent. Accepted physical laws are used merely a starting point for debate.

Anonymous said...

Caroline, I totally agree. Darren

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