Duckett v Comptroller-General of the Patent Office

This is an appeal from a decision of Mrs. Chalmers, the Deputy Director acting for the Comptroller-General, dated 12^th August 2005, that United Kingdom Patent Application 0208751.8 be excluded from patentability under section 1(1)(b) and (c) of the Patents Act 1977.

Section 1(1) of the Act states, in relevant part:

“A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say –

(a)

the invention is new;

(b)

it involves an inventive step;

(c)

it is capable of industrial application”.

In addition, I should refer to the definition of “industrial application” in section 4(1):

“Subject to subsection (2) below, an invention shall be taken to be capable of industrial application if it can be made or used in any kind of industry, including agriculture.”

The Deputy Director found that the invention described in the application was incapable of industrial application because it was said to operate “in a manner contrary to the principle of the conservation of energy”. She also found that the invention lacked inventive step over GB Patent Application 2354042 and German Patent Application 4429020.

The invention of the patent relates to an electric hydraulic powered engine or propulsion unit. According to the invention, electrical current from a storage battery powers an electric motor linked to a hydraulic pump; the pump, in turn, produces power to drive a hydraulic motor mounted to a gearbox; the gearbox produces motive power and the used hydraulic oil is returned to a storage tank which, in turn, delivers hydraulic oil to the main hydraulic pump and, thus, completes the on-going cycle.

A further hydraulic motor, which is powered from a main hydraulic pump rotates an alternator which returns charged electricity to the main storage battery. The spent hydraulic oil is returned to the main hydraulic storage tank. The alternator has the capacity to produce enough electricity to maintain the storage battery at full charge and have the ability to release further electricity to any auxiliary function that may be required of it via the control box. It is apparent that the only source of energy for the engine is the storage battery. This was confirmed to me by Mr. Duckett during the course of his oral submissions.

The battery powers the engine which, in turn, provides both motive power and power to rotate an alternator. The alternator is said to produce enough electricity to maintain the storage battery at full charge. In short, the engine provides motive power without the consumption of any energy at all; indeed, it produces more energy than it uses. In his skeleton argument on behalf of the Comptroller-General, Mr. Tappin submitted, and I agree, that this is not possible.

The Deputy Director expressed her conclusion in paragraph 14 of her Decision as follows:

“I have done my best to understand the applicants’ invention in the light of the application, the arguments in the correspondence and the explanation at the hearing. However, I am bound to say frankly that I remain in the dark as to how the engine could work as described. It remains inescapable that all machines expend energy in terms of heat, resulting from the action of frictional forces for example, and that no machine can ever be 100% efficient. I see no reason why the engine cannot be built and used to generate power – indeed Mr. Duckett said he has a working model and he has succeeded in generating electricity – but I am at a loss to understand how such an engine can maintain the battery at full charge and generate more energy than is put in. In the absence of any evidence to suggest that the applicants’ invention is anything other than a machine made up of conventional components, I am bound to conclude that the principle of the conservation of energy would have to be broken for the engine to operate in the way described. I therefore find that the invention is not capable of industrial application as required by section 1(1).”

In my judgment, and for the reasons that I have indicated, the conclusion of the Deputy Director is plainly correct. The invention described in the application is alleged to operate in a manner contrary to well-established physical laws. Consequently, it is not capable of industrial application.

The Deputy Director then proceeded to deal with the issue whether the device describes in the application involved any inventive step. In paragraph 21 of her Decision she noted:

“I have carefully reviewed the citations against the (albeit unclear) amended claims and the apparent statement of invention set out in the third paragraph of page 1 of the description. My task is made all the more difficult since the claims (taken singly and as a whole) and the description do not agree on what are the essential features of the applicants’ invention. For example, claim 1 merely relates to an electric hydraulic engine including a rechargeable battery which is clearly not new.”

She then designated the following engine components and arrangement as essential:

“The engine includes a battery that drives an electric motor which in turn drives a hydraulic pump. The pump supplies hydraulic oil to a motor connected to a gearbox to provide motive power, and also supplies oil to a second motor which drives an alternator, which provides power to charge the battery. The engine also includes an on/off switch for the battery and a cooler for the hydraulics.”

In my judgment, this is a reasonable characterisation of the invention and device described in the application.

The Hearing Officer referred to the earlier citation GB 2354042. Before me, Mr. Duckett accepted that this describes a device which is very similar to that described in his own application. The Hearing Officer considered that GB Application 2354042 does not disclose the specific arrangement because it does not disclose a gearbox and does not disclose an on/off switch. She considered that it would be obvious to include a gearbox and that it would be obvious to include an on/off switch.

I have reached the conclusion that that decision by the Hearing Officer was one which was an entirely reasonable one for her to reach. Indeed, I agree with it.

Before me, Mr. Duckett suggested that there is a further difference between the device described in GB Application 2354042 and that described in his own application, namely that in the earlier citation there is no express description of how the generator depicted is powered.

I am unable to accept this submission. It appears to me to be reasonably clear from the earlier citation that the generator is powered by a shaft which emerges from one of the two hydraulic turbines depicted. In any event, it seems to me that it is plain that the generator must be driven and it would be entirely obvious to drive it by an output from one of the hydraulic turbines to which I have referred.

In the circumstances, I conclude that the Decision of the Deputy Director that it was obvious in the light of that earlier citation to produce a device of the kind depicted in the application before me cannot be faulted.

In the circumstances, this appeal must be dismissed.