Nicholas Klemz v The Comptroller-General of Patents, Designs and Trade Marks

On an appeal from a Comptroller decision, the court reviews the decision below unless justice requires a rehearing. The decision may be disturbed only for legal or factual error, or serious procedural irregularity.

When assessing patentability under section 18(3) of the Patents Act 1977, the Comptroller must consider the evidence on the balance of probabilities. Where substantial factual doubt remains, the application proceeds only if credible material establishes a reasonable prospect that fuller investigation at trial would produce a patentable result. Mere optimism is insufficient.

An invention which, if operative, would contradict conservation of momentum and Newton’s laws lacked industrial application and sufficient disclosure. The appeal was dismissed.

The appellant appealed against the Hearing Officer’s refusal of UK Patent Application No. GB 2588415A, concerning an apparatus said to generate thrust or damping force through interactions between electrons and magnetic fields.

The Hearing Officer refused the application under sections 1(1)(c), 14(3), and 18(3) of the Patents Act 1977. The appellant challenged the characterisation of the invention, the assessment of prototype experiments, and the examination procedure. The Comptroller also relied on an alternative insufficiency ground based on lack of plausibility.

The central issues were whether the invention had industrial application, whether it was sufficiently disclosed, and whether the appeal or examination process disclosed any material error or procedural irregularity.

1. The appeal was dismissed. The court found no fault in the Hearing Officer’s reasoning or conclusion.

2. Under CPR 63.16(1) and CPR 52.21, the appeal was ordinarily limited to a review. It could succeed only if the decision was wrong or unjust because of a serious procedural or other irregularity.

3. The approach in Blacklight Power Inc. v The Comptroller-General of Patents [2008] EWHC 2763 (Pat) required the Office first to assess patentability on the balance of probabilities. If substantial doubt about a material fact remained, it had to ask whether credible material established a reasonable prospect that fuller investigation at trial would produce a different result. The greater the applicant’s opportunity to provide evidence, the less scope there was to expect helpful material to emerge later.

4. The claimed apparatus, if it worked as described, would operate inconsistently with conservation of momentum and Newton’s first and third laws. The application’s assertion that action and reaction forces were perpendicular did not answer the requirement that they be equal and opposite, and did not address the momentum of the apparatus as a whole.

5. The experimental videos showed only movement of a laser dot and did not establish the cause of that movement. The unexplained failure of the dot to return to its starting position, together with the absence of expert support for the underlying theory, meant that the evidence did not create a reasonable prospect of patentability after fuller investigation.

6. For the same reasons, the invention was not disclosed clearly and completely enough for performance by a skilled person. The procedural complaints were rejected: the Examiner was entitled to conclude that further discussion would not progress matters, and the Hearing Officer had independently considered the evidence.

1. High Court (Patents Court) — Appeal from the Hearing Officer’s decision BL O/0849/24. Appeal dismissed.

2. UK Intellectual Property Office — On 3 September 2024, the Hearing Officer refused the application under sections 1(1)(c), 14(3) and 18(3) of the Patents Act 1977.