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Tuesday, 18 November 2008

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. 


Anonymous said...

It's not unprovable ... it's not anything like the celestial teapot or Flying Spaghetti Monster.

Instead, it's as though I've shown you 100+ papers with pictures and evidence in favor of a highly improbable hypothesis, and you have yet to be convinced.

David said...

You could show me 1000 papers of nonsense, but it still wouldn't prove anything.

Anonymous said...

True, but it's a lot harder to wave away 1MJ of excess heat, as recently shown by the team at Rowan University (which, btw, included chemists armed with state-of-the-art spectrometers). If Mills is full of it, then how did 0.5 gram of elemental hydrogen produce all of that heat?

David said...

Simple answer: it didn't.

Gerontius said...

Finally got around to reading this decision and am uncomfortable with the way the whole matter has been dealt with. There are too many potential holes in the tests proposed for determining whether something is a valid scientific theory.

For example: the current Standard Model of Quantum Mechanics is, most likely, wrong. There is a difference in that the SMQM is probably correct in large chunks, just wrong in some details, whereas GUTCQM looks to be wrong in large chunks.

Nevertheless, there is significant scientific doubt about SMQM (if there wasn't, we wouldn't need CERN) and nobody is quite sure which bits will turn out to be wrong. Consequently, there is a significant expectation of at least part of the current theory turning out to be entirely wrong and any invention based on the current theory could therefore be refused as being incapable of industrial application under the UK(I)PO's "test".

Personally, I would take the view that since investigations into the validity of the theory are ongoing and, while Hydrinos seem unlikely, there may be something in the theory, the application should not be refused for lack of industrial applicability. If the theory (or some aspect of it) turns out to be correct, then no harm has been done to the inventor. If the theory turns out to be entirely rubbish then no harm has been done to the public since nobody could infringe a patent on an invention that cannot be performed!

Bypassing the whole industrially applicable thing and the dodgy reasoning it requires would also be a good way to focus on the important issue of sufficiency. Hydrinos are apparently central to the invention and, whether or not they are possible, it seems pretty clear that there's not enough information to enable a skilled person to "make" them - if there were, there would be no doubt over whether the theory was correct! So, UKIPO, stop faffing around and hurry up and refuse the application on sensible grounds.

David said...

The problem with your argument, G, is that the standard model fits all current known observations, and is therefore generally accepted. It makes certain predictions (e.g. the Higgs particle), which might or might not turn out to be true, but until the experiment is done one can safely say that it is correct, just as F=ma was correct until Einstein. The 'hydrino' theory, however, doesn't even fit with current observations, let alone make any falsifiable predictions. It's not even consistent with basic experimental measurements (see the recent corresponding US OA). I think the UK-IPO's test is therefore pretty sound.

A more sound rejection might be based on sufficiency, rather than industrial applicability, but I think either would do in practice.

Anonymous said...

My view is that if the invention cannot be put into practice, it can never be infringed and therefore the public is not inconvenienced by any granted patent but benefits from the receipt of renewal fees. If, contrary to David's views, the inventor is correct, he is entitled to protect his invention. Either way, a patent should be granted.

Gerontius said...

Actually, the reason the SM fits all current known observations is because it has been rewritten every time a new observation comes along to make it consistent. That's the main problem with the current theory.

It's interesting that you mention the Higgs: a particle predicted by the SM which has not yet been shown to exist. Much like the hydrino, no?

Hydino theory also makes predictions: it predicts "excess heat" and while the validity of the experiments confirming this are clearly in doubt, there is some experimental evidence to support those predictions. Having said that, the theory does all fall down due to its reliance on an impossible particle. Perhaps if the hydrino weren't so key there would be a greater chance of the theory being accepted as a possibility.

Still, my main concern is not whether hydrino theory is correct or whether the UKIPO should be refusing it for lacking industrial applicability, but that the test they have used in their refusal is full of problems and potential pitfalls.

Anonymous said...

"My view is that if the invention cannot be put into practice, it can never be infringed and therefore the public is not inconvenienced by any granted patent but benefits from the receipt of renewal fees... Either way, a patent should be granted."

But what if the applicant is able to secure investment funding on the back of the very reasonable assumption that the granted patent is valid. Surely the patent system should not support speculative monoplies sought by the applicant, nor should it allow patentees to benefit from the badge of approval bestowed upon an invention by a patent granting authority. More fool the investors I hear you cry; maybe, but if patent offices are in a position to prevent scams of this nature then they should do so.

I agree with later comments that insufficiency may be an easier objection to uphold, but IMHO the Hearing Officer's handling of industrial application was good.

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