Blacklight Power Inc v The Comptroller-General of Patents

At the patent application stage, the Comptroller should decide factual objections on the balance of the evidence. However, where substantial doubt remains on a fact capable of affecting patentability, the application should proceed if credible material gives a reasonable prospect that the issue would be resolved differently after a full investigation with expert evidence. Mere optimism or an assertion that further evidence may emerge is insufficient. This approach applies to objections that an invention is contrary to established physical laws and lacks industrial application or sufficiency. The appeal court reviews the decision below and may remit the application where the correct test was not applied.

Blacklight appealed from the Hearing Officer’s refusal of two patent applications concerning a plasma reactor and laser said to depend on a novel hydrogen species, the hydrino. The applications were rejected on the grounds that the underlying GUTCQM theory was probably invalid, contrary to accepted physical laws, and insufficiently disclosed under Patents Act 1977, sections 1(1)(c) and 14(3).

The central issue was the standard to be applied at the application stage where patentability depended on a disputed scientific theory.

1. Appeal allowed and applications remitted. The appeal was governed by CPR 63.17(1) and CPR 52.11. The court’s task was normally to review the Hearing Officer’s decision and intervene where he had erred in principle or was clearly wrong.
2. At the application stage, the Comptroller should examine the evidence and attempt to decide factual issues on the balance of probabilities. The applicant does not receive the benefit of every doubt. However, if there is substantial doubt about a factual issue capable of affecting patentability, the Comptroller must ask whether credible material gives a reasonable prospect that the issue will be resolved differently at a full investigation with expert evidence. If so, the application should proceed.
3. The reasonable prospect must be real and based on credible material. Mere optimism, an assertion that more time may produce a working model, or the existence of a case to answer is insufficient. The greater the applicant’s opportunity to provide supporting material at the application stage, the less scope there is for a different conclusion later.
4. This approach applied to objections that an invention was contrary to established physical laws and therefore lacked industrial application under section 1(1)(c) of the Patents Act 1977, or that its specification was insufficient under section 14(3). The word “clearly” in the relevant guidance meant that the objection should not be pursued where a reasonable and substantial factual dispute existed.
5. The Hearing Officer had applied a more-probable-than-not test but had not considered whether the evidence gave a reasonable prospect that GUTCQM might prove valid after fuller investigation. His findings did not establish that the applications had to proceed, because the scientific community’s lack of acceptance and the absence of convincing demonstrations were relevant matters. The evidence had not been placed before the court, so the issue was remitted to the Hearing Officer for reconsideration under the correct test.

The judgment records an appeal from the Hearing Officer’s decision dated 17 April 2008. The applications were remitted to the Office for reconsideration.