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. 

UK-IPO gets tougher on perpetual motion

Perhaps the UK-IPO is getting a little bit fed up with having to deal with impossible inventions. The IPKat noticed this decision (O/156/08), which deals with a patent application for a perpetual motion machine in an unusually swift, not to say tetchy, way. Since it is very short, it is reproduced in full here:

"This is an application for a patent in relation to a device, the operation of which is based on a fundamental misunderstanding of the basic laws of physics - ie. it’s a form of perpetual motion machine [IPKat comment: of type "alleged perpetua mobilia" under international classification code F03B17; thanks to Steve van Dulken]. The applicant, Mr Coonan, has requested a decision on the basis of the papers on the file.

The invention is a variable buoyancy device [illustrated right] that supposedly moves up and down in a fluid, by using eg. hydraulic forces within the fluid to change the volume (and hence buoyancy) of the device; the motion of the device being harnessed via cables and pulleys to generate electricity. The invention purports to create energy from nothing, and is therefore contrary to the law of conservation of energy. (Claim 1 is reproduced in an annex to this decision.)

The examiner has made several attempts to explain the flaws in the ‘physics’ of the invention, but he has not persuaded the applicant that his invention will not work. I do not think that I could do any better than the examiner in this regard, so I am not going to try.

I note that the Comptroller’s Hearing Officers have refused many applications for perpetual motion machines in recent years, and therefore I am also refusing this application under section 18(3) because it is not capable of industrial application (as required by section 1(1)(c) of the Act) for all the same reasons that have been given in those earlier decisions."

The decisions the hearing officer referred to are (with links where the decisions have been published) O/112/08, O/086/08, O/285/07, O/216/07, O/080/07, O/034/07, O/275/06, O/150/06, O/044/06, O/228/05, O/164/05, O/162/05, O/224/02, O/213/02, O/389/00 and O/368/00. One common factor (other than all the alleged inventions being impossible) is that in none of these cases was the applicant professionally represented. The IPKat is not sure whether this represents a sign that this type of applicant is always impecunious or if any sensible patent attorney would try to steer well clear of such inventions. He suspects both may be the case. Merpel wonders what the problem would be in representing such clients; aren't patent attorneys generally ok with arguing for impossible cases?

More impossible inventions here and here.

The continuing incredible adventures of Dr Randell Mills

Following on from their earlier unsuccessful attempts (see the IPKat’s earlier post here), US company Blacklight Power has now failed to persuade the UK Patent Office of the validity of the theory behind their patent applications (decision O/114/08).

right: Dr Mills hard at work in Blacklight Power labs on yet another of his incredible inventions.

Two GB applications (GB0521120.6 and GB0608130.1) were made in the name of Blacklight Power, the brainchild of Professor Branestawn-type scientist and inventor Dr Randell Mills and a commercial vehicle for applications of his theories. The first application related to a plasma reactor, the second to a laser. Both relied on the existence of a form of hydrogen known as ‘hydrino’ that directly contradicted existing physics. Dr Mills claims that hydrogen can be put into this new form by allowing electrons in the ground state to transition to a lower energy state (not allowed according to quantum mechanics, hence the term 'ground state'), thereby releasing energy.

In both applications the examiners objected that the new hydrogen species was unknown to science. The inventions were therefore contrary to generally accepted physical law and not capable of industrial application, contrary to section 1(1)(c). They also objected that, since the claimed inventions relied for their operation on a material that current science would deem impossible, the specifications did not comply with the requirement of section 14(3). These objections would normally be used when examiners reject applications for perpetual motion machines, which Dr Mills’ inventions seem (at least to the IPKat) to have a certain flavour of.

Both applications effectively relied on the hydrino theory being true, since each had independent claims referring to hydrino material: with the plasma reactor producing it and the laser using it in a laser cavity. The hearing officer therefore had to determine whether the theory could be ‘true’, and how far he would need to go to prove this to his satisfaction. The hearing officer came up with the following (emboldened in part by the IPKat):

“Such a question is difficult to address, to say the least, since the nature of the scientific method is such that scientific theories can never be shown to be 100% true. However, theories that are generally accepted as valid descriptions of nature it seems to me conform to certain criteria. The main criteria may be as follows:

• a) the explanation provided by the theory is consistent with existing generally accepted theories. If it is not, it should provide a better explanation of physical phenomena than do current theories, and should be consistent with any accepted theories that it does not displace;
• b) the theory should make testable predictions, and experimental evidence should show rival theories to be false and should match the predictions of the new theory;
• c) the theory should be accepted as a valid explanation of physical phenomena by the community of scientists who work in the relevant discipline.

It may be that other criteria can be identified, for example that a successful theory should also be intellectually satisfying and economical in its explanation, but I think that for any theory to be accepted as “true” it must satisfy at least a), b) and c) above. Where I refer to the “truth” or “validity” of a scientific theory in this decision it is in that sense.

I then need to ask what level of confidence should be demanded in the truth of this theory in order for patents to be granted on effects which depend on it. If, as in the present case, an applicant proposes a new theory and claims an invention dependent on it, it would be unfair to the applicant if the patent was refused but the theory turned out in due course to be true. If on the other hand patents were allowed to be granted on inventions depending on any theory, however speculative, then in the words of Paez’s Application (BL O/176/83) “it would be completely wrong and against public interest to bestow upon misleading applications the rights and privileges of a granted patent”. I consequently take the view that it is appropriate to demand a real but moderate level of confidence in the truth of the theory. I will therefore make the assessment on the basis that it should be more probable than not that the theory is true if I am to allow the applications to proceed.”

The hearing officer then proceeded to show that Dr Mills’ theory failed on each of the three tests. The theory failed to make any testable predictions that showed any existing theories to be false, and was in no way accepted by the physics community. The claimed inventions were consequently not capable of industrial application and, since they also relied fundamentally on the existence of a material not generally accepted to exist in nature, it would not be possible for the skilled person to perform them, contrary to section 14(3). The applications were therefore refused.

The IPKat is impressed at the clarity, thoroughness and patient restraint of this decision. The hearing officer's test in particular is obviously the correct way to view all scientific theories (and not just those that form the basis for patent applications). Patentees would be well-advised to avoid relying on any doubtful scientific theories in their claimed inventions, and instead stick to patenting inventions that can at least be reproduced and tested by others.

More perpetual motion machines here.
More bad science here.
More incredible adventures here.

Blacklight Power: sci-fi science rejected by UK-IPO

The rather mysteriously-named Blacklight Power, Inc. has come to the attention of the IPKat through a decision that was issued recently by the UK-IPO. The decision (BL O/076/08) resulted in refusal of two of Blacklight's UK patent applications relating to a computerised atomic modelling system, on the grounds that any contribution made was only that of a discovery or scientific theory, in line with the (by now very familiar) Aerotel/Macrossan approach.

This in itself was fairly unremarkable, and the IPKat would normally not think of bothering his readers with it. However, what piqued the Kat's interest was how far the UK-IPO went in reaching their decision, given the rather bizarre subject matter involved. The applications, both of which derived from international application WO 2005/067678, related to a very unusual scientific theory that, among other things, claims to be able to produce virtually limitless amounts of power (bringing to mind various other fantastical perpetual motion-type claims such as those made by Steorn). The hearing officer was, however, much more diplomatic in saying "the physics underlying the invention as disclosed in the applications and comprehensively explained by Dr Mills at the hearing is at the very limit of my understanding".

All this is the work of inventor and scientist Randell Mills (pictured), who has for many years been developing his theory of 'Classical Quantum Mechanics' (see Wikipedia for more details and links). The theory has been widely discredited by many conventional physicists for being, among other things, quite clearly wrong. Dr Mills is not to be dissuaded, however, and continues in his valiant efforts to convince the world that a new energy breakthrough is just around the corner thanks to his new 'hydrino' energy source. Blacklight, which appears to be a commercial vehicle for Dr Mills' ideas, has even been able to obtain investment money to pursue these ideas and attempt to get some patent protection. So far, it seems that Blacklight is not doing particularly well. Even the USPTO realised (eventually) that some of their claims were a bit too outlandish to justify granting a patent on.

As a slight aside, all this brings to the IPKat's mind the work of Arthur Pedrick, well known in patent circles for his outlandish ideas, which he publicised by means of many and various GB patent applications (see here for a selection). Dr Mills' claims look quite tame compared with some of Arthur's ideas.