What Is The Standard Of Proof For Patentability?

The legal tests for novelty, inventive step and, less commonly,

industrial application form the basis of the majority of patent

litigation before the UK courts. However, well before a patent

becomes the subject of litigation in the UK, its subject matter has

already been assessed by the UK or the European Patent Office

during prosecution to ensure that it satisfies the requirements for

patentability. In the UK, these requirements can be found in s1(1)

of the Patents Act 1977.

Whilst the requirements for patentability are well documented,

the standard to which an applicant must establish patentability is

less so. The nature of the standard of proof for patentability was

recently considered in Blacklight Power Inc v The

Comptroller-General of Patents by Mr Justice Floyd in the

Patents Court.1

Background

The case concerned an appeal by Backlight Power Inc from a

decision of the Hearing Officer to reject two of its patent

applications. The patent applications related to a plasma reactor

which generates power and a novel hydrogen species and a laser

operated by the same hydrogen species. Both applications were based

on the inventor's "Grand Unifying Theory of Classical

Quantum Mechanics", which was shorted in the Judgment to

"GUTCQM".

The examiners of the applications objected to the subject of the

applications on the basis that aspects of the invention were

contrary to generally accepted physical laws and therefore not

capable of industrial application as required by s1(1)(c) of the

Patents Act. The examiners also objected on the basis that the

specification did not comply with the requirement of sufficiency in

section 14(3) of the Patents Act.

Decision of the Hearing Officer

In upholding both of the examiner's objections, the Hearing

Officer identified the question which he had to address to be

whether the underlying theory of GUTCQM was true. In doing so, he

identified three criteria which he had to consider in determining

whether a scientific theory was true, namely whether:

the explanation of the theory is consistent with existing

generally accepted theories. If it is not, it should provide a

better explanation of physical phenomena then current theories and

should be consistent with any accepted theories that it does not

displace;

the theory makes testable predictions, and the experimental

evidence shows rival theories to be false and matches the

predictions of the new theory, and whether

the theory is accepted as a valid explanation of...