Blacklight Power Inc v The Comptroller-General of Patents

This is an appeal from a decision of Mr Marchant, Deputy Director acting on behalf of the Comptroller of Patents (“the Hearing Officer”), dated 17^th April 2008. By his decision the Hearing Officer rejected two patent applications in the name of Blacklight Power Inc., the Appellant. The first, GB 0521120.6, relates to a plasma reactor which generates power and novel hydrogen species. It is based on a PCT application containing over 300 claims. The second, GB 0608130.1, relates to a laser which operates using the same hydrogen species. It too is based on a PCT application containing nearly 150 claims.

The sole inventor of both applications is identified as Dr. Randell L. Mills. Dr Mills is the author of a vast number of publications describing what he has called his “Grand Unifying Theory of Classical Quantum Mechanics” which I shall refer to by the initials GUTCQM. These publications are listed over 9 closely typed pages in each of the applications in suit.

The hydrogen species which is used in both applications is supposed to exist in a lower energy state than the lowest possible energy state recognised by standard physical laws. For that purpose the electron would have to orbit at a radius smaller than any ever observed for hydrogen (the Bohr radius). The existence of this hydrogen species, christened “the hydrino” by Dr Mills, is said by both applications to be “disclosed” in the listed Mills publications.

The examiners assigned to the applications both objected that the hydrino proposed by Blacklight was contrary to generally accepted physical laws and was therefore not capable of industrial application in the sense required by section 1(1)(c) of the Patents Act 1977. They further objected that, as the claimed inventions relied for their performance on the existence of the hydrino, the specification did not comply with the requirement for sufficiency in section 14(3) of the Act.

The Hearing Officer upheld both these objections. From his decision, Blacklight appeals to this court. On the appeal Blacklight was represented by Mr Henry Ward and the Comptroller was represented by Mr Michael Edenborough. Following the oral hearing both counsel supplemented their submissions by further short written submissions on authorities to which reference had been made in the course of the hearing, but of which copies had not been made available.

It was common ground for the purposes of this appeal that by virtue of CPR 63.17(1), Part 52, the general appeals provision in the CPR, applies to this appeal. Accordingly, by CPR 52.11, the appeal is limited to a review of the decision below unless the court considers in an individual case that it would be in the interests of justice to hold a rehearing.

It was also common ground that, in those circumstances, before this court interferes with the decision of the Hearing Officer, it should be satisfied that he erred in principle or was clearly wrong.

Section 1(1) of the Act provides:

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

(a)

…;

(b)…;

(c)

it is capable of industrial application;

(d)

…

and references in this Act to a patentable invention shall be construed accordingly.”

Section 4(1) explains what is meant by industrial application:

“4.-(1) 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.”

Section 14 deals with the requirement for sufficiency of the specification at the application stage:

“(2)

Every application for a patent shall contain –

(a)

…;

(b)

a specification containing a description of the invention, ….

(3)

The specification of an application shall disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.”

These sections have counterparts in those which the court considers when an application is later made to revoke the granted patent on these grounds before the Comptroller or the court.

The steps involved in a substantive examination of a patent application are set out in section 18(2) to 18(4).

“(2)

On a substantive examination of an application the examiner shall investigate, to such extent as he considers necessary in view of any examination carried out under section 15A above and search carried out under section 17 above, whether the application complies with the requirements of this Act and the rules and shall determine that question and report his determination to the comptroller.

(3)

If the examiner reports that any of those requirements are not complied with, the comptroller shall give the applicant an opportunity within a specified period to make observations on the report and to amend the application so as to comply with those requirements (subject, however, to section 76 below), and if the applicant fails to satisfy the comptroller that those requirements are complied with, or to amend the application so as to comply with them, the comptroller may refuse the application.

(4)

If the examiner reports that the application, whether as originally filed or as amended in pursuance of section 15A above, this section or section 19 below, complies with those requirements at any time before the end of the prescribed period, the comptroller shall notify the applicant of that fact and, subject to subsection (5) and sections 19 and 22 below and on payment within the prescribed period of any fee prescribed for the grant, grant him a patent.”

The Hearing Officer identified the question which he had to address as whether the underlying theory of GUTCQM was true. As this was the underlying theory for the existence of the hydrino, which in turn was an essential component of the invention, he was in my judgment right to do so.

In paragraph [22] of the Decision, the Hearing Officer identified a number of criteria which he considered came into play when one considered whether a scientific theory was true. He said this:

“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 the 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….. When I refer to the “truth” or validity of a scientific theory in this decision it is in that sense.”

Having identified these three criteria, The Hearing Officer then asked himself what level of confidence should be demanded in the truth of this theory for patents to be granted on effects which depend on it. He said this at [23]:

“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 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 the 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 notthat the theory is true if I am to allow the applications to proceed.” (original emphasis)

The Hearing Officer went on to point out (at [24] and [25]) that GUTCQM was clearly inconsistent with existing generally accepted theories. He pointed to two areas where GUTCQM parted company with established theory. Firstly, if the hydrogen atoms can exist in an energy state lower than the lowest state predicted by quantum mechanics, why do the hydrogen atoms with which we are familiar not convert spontaneously to a lower state? Secondly, he pointed to the fact that, in GUTCQM, the hydrogen atoms are said to have smaller radii than the smallest allowed for by applying standard physics.

It followed that the Hearing Officer concluded (at [28]) that the new theory did not meet the first part of his criterion (a): it was not consistent with existing generally accepted theories. Of course, as the Hearing Office recognised, that much was common ground between the Comptroller and the applicant. The whole point of Dr Mills’ theory was that it was a new theory of matter.

The Hearing Officer therefore went on to consider the second part of his criterion (a), namely whether GUTCQM provided a better explanation of physical phenomena than existing theories and whether it is consistent with any remaining theory that it does not displace. He felt unable to assess this himself (see [28]). He considered that it was more important to see how the theory was viewed by the scientific community generally. This is something which he did in connection with criterion (c).

The Hearing Officer then went on (at [29] to [34]) to consider his criterion (b), namely whether the new theory produced any testable predictions. As to this, he explained that Dr Mills had produced voluminous material in the form of research papers reporting on experiments. Many of them had been published in peer reviewed journals. He said that they produced results which were at times explained in terms which were consistent with the new theory, or inconsistent with existing theories.

The Hearing Officer said at [31] that he was not well placed to assess how convincing the material was. He had however perused the material, consisting of 116 papers. He thought it best to concentrate on papers which did not involve Dr Mills “in order to gain as independent as possible a view”. This left 37 papers of which 15 contained experiments. He noted in [33] that even these 15 papers mostly involved some connection with Blacklight or its predecessors.

The experiments in question relate to calorimetry of electrolytic cells. The Hearing Officer found at [34] that:

“in most cases the experiments produce some level of excess heat that the scientists find hard to explain”.

The Hearing Officer pointed out (also at [34]) that:

“Some accounts consider the possible reasons for excess heat and are unable to suggest anything other than hydrinos”.

and that:

“Although the authors tend to mention the hydrino theory they do not in the main conclude that it explains any excess heat”.

He concluded:

“My impression is that these authors did not find evidence in their work which supported [GUTCQM].”

It would appear that this is something of a provisional conclusion as, at [35] the Hearing Officer says:

“Criterion (c) takes on greater importance since I am unable to address (a) or (b) directly”

Criterion (c) was the extent to which the theory has been accepted as valid in the scientific community. The Hearing Officer pointed out that a serious scientific theory of the importance of GUTCQM would be expected to have attracted discussion in a variety of media, from newspaper to textbooks. He had given Blacklight a specific opportunity to address this concern of his, but Blacklight had not referred him to any further material, beyond the material he had already been provided with. On reviewing the material for this purpose, the Hearing Officer concluded that:

“I find them even less convincing in relation to acceptance of the theory by the physics community at large. It seems to me on the evidence supplied to me by Blacklight that there is substantially no acceptance of the theory by the physics community”

The Hearing Officer also referred to the fact that the claims for excess heat had been made for some time without, apparently, any conclusive demonstration or commercial product emerging.

He concluded at [39]:

“In summary, it appears that [GUTCQM] upon which these inventions depend, does not reach the threshold that I set for this assessment, namely that it should be more likely than not that it provides a valid description of atomic systems.”

The principal ground of appeal was that Hearing Officer wrongly directed himself when he held that the appropriate test for claims which relied upon a new theory was whether it was more probable than not that the theory was true. The correct test, so Blacklight argues, is whether the theory is clearly contrary to well established physical laws. As developed in his skeleton argument, Mr Ward contended that the test should be whether the applicant has a reasonable prospect of showing that his theory is a valid one.

Mr Ward very fairly accepted at the outset that if it was necessary for the applicant to prove its theory now on the balance of probabilities then the appeal would fail. To put it another way, the Appellant accepts that, on the material available to the Hearing Officer, the theory underlying the hydrino is probably incorrect.

This is the first question which needs to be considered. The dispute between the parties was in connection with the correct standard of proof, as opposed to who shouldered the onus. In Fujitsu's Application [1996] RPC 511 at 533 Laddie J, in reaching a conclusion that a patent application related to excluded subject matter, having dealt with the question of who bore the onus, said this:

That passage relates to section 1(2), but it is clear that what Laddie J said about the benefit of the doubt applies to the positive requirements for patentability, such as lack of industrial applicability. Laddie J there referred to “the benefit of the doubt” being given to the applicant. Mann J considered this further in Macrossan’s Application [2006] EWHC 705, another case about the statutory exclusions:

“The reference to the benefit of the doubt is probably intended to signify that if there is substantial doubt then the burden has not been fulfilled. I do not consider that it means that if there is any doubt (legal or factual) then the application should succeed. It is not intended to import something like the criminal burden of proof into the proceedings. The tribunal still has to consider whether the exception applies, and it can come to the conclusion that it does without having to find that there is no doubt at all about it.”

When the case went to the Court of Appeal it was heard together with Aerotel’s Application [2007] RPC 7; [2006] EWCA] Civ 1371. Jacob LJ, giving the judgment of the Court said at [5]:

“…we should record also that we accept [counsel for the Comptroller’s] submission that any pure question of law involved should be decided during prosecution. …. Of course if a debatable question of pure fact is or may be involved at the application stage, things are different one cannot then say that the decision at that point must be the last word on the subject. Then the applicant must be given the benefit of any reasonable doubt.”

Jacob LJ spoke there of “a debatable question of pure fact” which was or might be involved, and as to which the applicant should have the benefit of “any reasonable doubt”. Although all these cases are concerned with exclusions to patentability, I cannot think that the same does not apply to objections to patentability such as we are concerned with here. The Office, at the application stage, is necessarily an imperfect tribunal of fact. For example if there is a genuine dispute as to whether a particular technical fact is part of the common general knowledge, the Office may or may not be able to resolve it. There may be substantial doubt about it. It may be critical to whether the application is allowed or refused. In those circumstances an application should not be refused, because an incorrect refusal cannot be remedied at a later stage.

I think that the effect of these authorities is 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, 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.

This approach is also consistent with the Office’s approach to examining objections of inventive step which is described in its published Work Manual as follows:

“Standard of certainty, benefit of the doubt

3.67

When a prima facie objection of lack of inventive step is contested the examiner will determine the matter on the balance of the evidence available, the standard of certainty being the same pre-grant (ex-parte proceedings) as post-grant (inter partes proceedings), ie it is determined on the balance of probabilities.

3.68

An objection of obviousness should not be pursued if there is a genuine possibility that there is an inventive step. The possibility must however be real and it is far from sufficient in rebuttal of an objection that there is merely a case to be answered, or that the applicant asserts that there is doubt. The matter should be decided on the balance of the evidence available.

3.69

If the substantive examiner is unable to reach a conclusion on inventive step because of lack of technical knowledge which he cannot readily rectify and there seems a strong prima facie case that the invention is obvious, it is reasonable for the examiner to put a specific query to the applicant or to object that there is no inventive step and see what reply the applicant makes. 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.”

It is on this basis that UKIPO routinely rejects applications for perpetual motion machines. The examiner objects that the invention appears to contravene established physical laws. The applicant is given an opportunity to demonstrate that it does not, or that his invention works. If, or rather when, he fails to do so the application is rejected. It would not be enough for the applicant to say that, given further time, he could produce a working model. In those circumstances there is no reasonable prospect that matters will turn out differently on a fuller investigation.

The EPO Guidelines for Examination contain a passage concerned with inventions which operate inconsistently with well established physical laws in the section dealing with capability of industrial application at Part C Chapter IV section 5.1:

“One further class of "invention" which would be excluded, however, would be articles or processes alleged to operate in a manner clearly contrary to well-established physical laws, e.g. a perpetual motion machine.”

A similar passage appears in the UKIPO’s Works Manual:

“Processes or articles alleged to operate in a manner which is clearly contrary to well-established physical laws, such as perpetual motion machines, are regarded as not having industrial application, as was held in Paez's Application (BL O/176/83) and Webb's Application (BL O/84/88). An alternative or additional objection may be that the specification is not complete enough to allow the invention to be performed under s.14(3) (see 14.79).”

I think these passages are consistent with the authorities I have referred to. The word “clearly”, which appears in both extracts, merely establishes that where there is a reasonable and substantial factual dispute (“a debatable factual question”) about whether the invention does offend against physical laws, then the objection should not be pursued.

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.

The second limb of Mr Ward’s submission, and one which is essential for success overall, is that if the Hearing Officer had applied the correct test, he would have allowed the application to proceed to grant.

Mr Edenborough submitted that the Hearing Officer was correct to apply a balance of probabilities test. He said that was the test which would be applied at a full trial of validity, and there was no basis for applying a less rigorous test at the application stage. Mr Edenborough did not argue that, in the event that I came to the decision that the approach was incorrect, I could uphold the Hearing Officer’s decision on the basis of the test advanced by Blacklight.

I have dealt with what I consider to be the correct test above. 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.

I turn to the second limb of Mr Ward’s submissions: if the Hearing Officer had applied the correct test he would have been bound to allow the application to proceed to grant.

In this connection it should be borne in mind, on the one hand, that the Hearing Officer found that he was not in a position to assess whether GUTCQM was consistent with theories which it did not displace ([28]); that he was not well placed to assess how convincing the experimental material relied upon by the applicant was – he could not do so directly in the way that an expert in the field could ([31]); and that the most important criterion was therefore the extent to which the theory had been accepted by the scientific community. Here he recorded an impression that the authors in question had not found any support for the theory.

Had the matter gone no further than the first two of the Hearing officer’s criteria, it could be said that he was recognising there was a debatable underlying question of fact on which it could not be said that the applicant had no reasonable prospect of success. But his question concerning acceptance of the theory by the scientific community, was nevertheless a reasonable, and in the circumstances practical question to ask. Certainly, the absence of either widespread discussion or acceptance in the scientific literature or other media was a factor he was entitled to take into account. Such a question is an indirect way of approaching the underlying theory and physical phenomena. Does the absence of any real discussion or acceptance (or indeed practical demonstration) of GUTCQM mean that one can conclude now that there is no reasonable chance that the applicant would be able to establish his position at trial?

It is clear that the Hearing Officer was alive to the danger of refusing an application in circumstances where the refusal depends on a disputed theory which may subsequently turn out to be correct: see the passage I have cited from [23] in the decision. In considering criterion (c) he was also alive to the fact that GUTCQM had been around for many years without evidence emerging as to its validity. That fact alone might be thought to make it unreasonable to suppose that the position would be different at a trial, particularly where, as here, the applicant had no reason which the Hearing Officer found plausible for explaining the absence of discussion or acceptance. There was certainly material before him on which he could have gone on to address, and decide, the question of whether there was any reasonable prospect that, on a fuller investigation, evidence would emerge which would support GUTCQM as a valid theory on the balance of probabilities. It would have been entirely fair for him to address and decide that question, given that the applicant had been given every opportunity to provide evidence is support of his theory. I am not therefore persuaded to accept the second limb of Mr Ward’s submission, namely that if the Hearing Officer had applied the correct test, he would necessarily have allowed the application to proceed to grant.

As I have said, Mr Edenborough did not argue on this appeal that the decision could be upheld even on the correct test. That would involve me in an examination of the evidence to see whether there was indeed a dabatable question of fact on which there was some reasonable prospect of Blacklight succeeding. In any event, the problem with taking that course in the present case is that none of the voluminous material which was placed before the Hearing Officer in support of GUTCQM has been placed before me, let alone analysed in the submissions of counsel. That makes it wholly impracticable for me to carry out such an exercise. Moreover it would be wrong to embark on that course in the absence of a Respondent’s Notice.

In those circumstances I propose to remit the matter to the Hearing Officer with a view to his reconsideration of the evidence in the light of the test which I have propounded.

It is worth pointing out that the need for the matter to be remitted to the Hearing Officer might have been avoided if the Comptroller had thought to serve a Respondent’s Notice. I have noticed that it is rare for the Comptroller to serve Respondent’s Notices in appeals to the Patents Court. I was told this was a question of timing, by which I understood that consideration of the need for a Respondent’s Notice did not take place until too late a stage. The Office cannot rely on the Court to allow it raise grounds on which the decision can be supported if it takes this approach. Moreover a Respondent’s Notice served in due time can have the effect of discouraging appeals which have no real merit.

It follows that I shall allow the appeal and remit the cases to the Office 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.