West Law Report

Standard of proof for patents

Posted in Times Law Report by mrkooenglish on December 12, 2008

From The Times
December 10, 2008
Standard of proof for patents

Chancery Division
Published December 10, 2008
Blacklight Power v Comptroller-General of Patents, Designs and Trade Marks

The correct standard of proof for establishing patentability was the balance of probabilities.

Mr Justice Floyd so held in the Patents Court of the Chancery Division on November 18, 2008, when allowing an appeal by Blacklight Power Inc against the decision of the Comptroller-General of Patents, Designs and Trade Marks to reject two patent applications on April 17, 2008.

The case was remitted to the comptroller-general for consideration whether on a full investigation, including expert evidence, there was a reasonable prospect that the theory put forward was valid.

HIS LORDSHIP said that although Fujitsu Ltd’s Application ([1996] RPC 511), Macrossan v Comptroller-General ([2006] EWHC 705 (Pat)) and Aerotel v Telco Holdings ([2007] Bus LR 634) were concerned with exclusions to patentability, they also applied to objections to patentability, such as the present case.

The essence of those authorities was that it was not the law that any doubt on an issue of fact, however small, would force the comptroller to allow a patent application to proceed to grant. Alternatively, the comptroller should examine the material before him and attempt to make a conclusion on the balance of probabilities.

Should it be considered that there was a substantial doubt about an issue of fact that could lead to patentability at that stage, the comptroller should consider whether there was a reasonable prospect that matters would turn out differently if the issue was fully investigated at a trial. If that was so, the application to proceed should be allowed.

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