Duckett v Comptroller-General of the Patent Office

An alleged invention is not capable of industrial application where it depends on operation contrary to well-established physical laws, including the conservation of energy. A machine cannot be treated as industrially applicable on the basis that it may be built if the claimed mode of operation is physically impossible. For inventive step, the essential features of the invention must first be identified from the application. Features that would have been obvious additions to a substantially similar prior-art device do not establish an inventive step.

The appellant appealed from the Deputy Director acting for the Comptroller-General, who decided that United Kingdom Patent Application 0208751.8 was excluded from patentability under section 1(1)(b) and (c) of the Patents Act 1977. The application concerned an electric-hydraulic engine in which a battery powered hydraulic machinery and an alternator, allegedly generating sufficient electricity to maintain the battery fully charged and provide additional power.

The issues were whether the alleged operation was capable of industrial application and whether the claimed device involved an inventive step over GB Patent Application 2354042 and German Patent Application 4429020.

1. Industrial application. The appeal was dismissed. The only source of energy for the proposed engine was the storage battery, yet the device was alleged to provide motive power, maintain the battery at full charge and generate additional electricity. That mode of operation would produce more energy than it consumed and was contrary to well-established physical laws. The invention was therefore not capable of industrial application under sections 1(1)(c) and 4(1) of the Patents Act 1977.
2. Identification of the invention. The essential arrangement was reasonably characterised as a battery driving an electric motor, which drove a hydraulic pump supplying hydraulic oil to a motor connected to a gearbox for motive power and to a second motor driving an alternator to charge the battery, together with an on/off switch and hydraulic cooler.
3. Inventive step. GB Patent Application 2354042 disclosed a very similar device. The absence of an expressly described gearbox and on/off switch did not confer inventiveness, since those additions were obvious. It was also reasonably clear that the generator in the earlier citation was driven by a shaft from one of the hydraulic turbines; in any event, driving it in that way would have been obvious. The Deputy Director was entitled to conclude that producing a device of the claimed kind was obvious. The decision under appeal was upheld and the appeal dismissed.

High Court (Patents Court): Appeal from the decision of the Deputy Director acting for the Comptroller-General dated 12 August 2005. The appeal was dismissed.