In the wake of the Copenhagen Accord 2009 and the Cancun Agreements 2010, a number of patent offices have introduced fast-track mechanisms to encourage patent applications in relation to clean technologies - such as those pertaining to hydrogen. However, patent offices will be under increasing pressure to ensure that the granted patents satisfy the requisite patent thresholds, as well as to identify and reject cases of fraud, hoaxes, scams, and swindles.
This article examines the BlackLight litigation in the United States, the United Kingdom, and the European Patent Office, and considers how patent offices and courts deal with patent applications in respect of clean energy and perpetual motion machines.
The capacity of patent offices to grant sound and reliable patents is critical to the credibility of the patent system, particularly in the context of the current focus upon promoting clean technologies.
Matthew Rimmer is an Australian Research Council Future Fellow, Associate Professor and Associate Director of Research, ANU College Of Law, and Associate Director, ACIPA.
In the wake of the Copenhagen Accord 2009 and the Cancun Agreements 2010, a number of patent offices have introduced fast-track mechanisms to encourage patent applications in relation to clean technologies, such as those pertaining to hydrogen. However, patent offices will be under increasing pressure to ensure that the granted patents satisfy the requisite patent thresholds, as well as to identify and reject cases of fraud, hoaxes, scams, and swindles.
This article examines the BlackLight litigation in the USA, the UK, and the European Patent Office, and considers how patent offices and courts deal with patent applications in respect of clean energy and perpetual motion machines.
The capacity of patent offices to grant sound and reliable patents is critical to the credibility of the patent system, particularly in the context of the current focus upon promoting clean technologies. This article argues that there is a need for patent offices to have greater discretion to deal with cases of scientific misrepresentation, misconduct, and fraud; and that there should be greater scope for penalties for such offences.
The hydrogen economy
In the wake of the Copenhagen Accord 2009, and the Cancun Agreements 2010, there has been much interest in the topic of IP and climate change.1 A number of patent offices around the world have introduced fast-track mechanisms to encourage green patent applications.2 There has been much discussion about options to provide access to clean technologies, such as technology transfer, patent pools, public sector licensing, compulsory licensing, patent subject matter exclusions, and Climate Innovation Centres.
Dan Burk and Mark Lemley have commented that there has been an expansive view taken of patentable subject matter:
Accordingly, a wide range of clean technologies would be eligible for patent protection—including forms of renewable energy such as wind turbines, solar energy, geothermal energy projects, tidal, and hydro power, as well as energy efficiency devices, green cars and transportation, and smart grids. Nonetheless, there have been numerous contentious inventions, which may be excluded from patentable subject matter. Most pertinently, fraudulent clean technologies—which do not work—have been the subject of particular scrutiny by patent offices.
Patentable subject matter has been defined quite broadly, as encompassing ‘anything under the sun that is made by man.’ Read literally in light of this definition, it is hard to think of any new idea in any field of human endeavour that would not qualify for proper patent protection. There are, however, a few judicially created exemptions from the scope of patent protection, including the rule against the patenting of abstract ideas.3
One clean technology which attracted some attention is hydrogen. In his 2003 State of the Union address, President Bush announced a hydrogen initiative to address America's growing dependence on foreign oil and improve the environment:
The National Academies’ February 2004 report on the Department of Energy Hydrogen Program observed: ‘A transition to hydrogen as a major fuel in the next 50 years could fundamentally transform the U.S. energy system, creating opportunities to increase energy security through the use of a variety of domestic energy resources for hydrogen production while reducing environmental impacts, including atmospheric CO2 emissions and criteria pollutants’.5 The National Renewable Energy Laboratory is engaged in a range of research on hydrogen production, storage, and fuel cells.6
With a new national commitment, our scientists and engineers will overcome obstacles … so that the first car driven by a child born today could be powered by hydrogen, and pollution-free. Join me in this important innovation to make our air significantly cleaner, and our country much less dependent on foreign sources of energy.4
In Australia, CSIRO have a hydrogen research and development programme as part of the Energy Transformed Flagship Program:
CSIRO's Hydrogen Technologies Program ‘aims to develop and deploy science and engineering in materials, devices and tools to ensure that Australia has access to high efficiency and safe hydrogen production, distribution, storage and consumption technologies’.8
CSIRO offers internationally recognised expertise in developing new technologies to advance the ‘hydrogen economy’. The hydrogen economy refers to technologies and an infrastructure system in which hydrogen is used as the major energy carrier to increase energy sustainability, reduce or eventually eliminate dependence on fossil fuels, and reduce or eliminate pollution and greenhouse gas emissions. Hydrogen can be used in place of, or in combination with, conventional fuels. The combustion of hydrogen generates no greenhouse gases (other than water), particulate matter, or other pollutants. With growing concern over sustainability, cost and security of energy supply, there is an increasing emphasis worldwide to develop a range of technologies for hydrogen generation, storage, safety, transportation/distribution infrastructure and utilisation. Hydrogen technologies, and ultimately the hydrogen economy, offer a path to a sustainable energy future for Australia.7
Jeremy Rifkin has rhapsodized about the potential of hydrogen economy:
Such enthusiasm is striking, given Rifkin's hostility to other emerging technologies—most notably, biotechnology.
We find ourselves on the cusp of a new epoch in history, where every possibility is still an option. Hydrogen, the very stuff of the stars and our own sun, is now being seized by human ingenuity and harnessed for human ends.9
Ian Lowe (author, scientist, and President of the Australian Conservation Foundation) has provided a social and environmental impact assessment of the hydrogen economy.10 He observes: ‘The case for the future hydrogen economy rests on three foundations: depletion of petroleum reserves, global change, and the need for a secure, equitable world.’11 Lowe maintains: ‘One solid argument for hydrogen as a fuel is essentially that it appears the only realistic solution to the problem of a world dependent on plentiful transport fuels, as the peak of world oil production leads to scarcity and higher prices for petroleum products.’12 He contends that ‘the only prospect of more equitable access to energy, arguably a prerequisite for a secure and peaceful future, involves the development of energy technologies based on plentiful resources.’13 Lowe recognizes, though, that there are technical and economic challenges for the hydrogen economy: ‘Both technically and economically, the most attractive way to produce large amounts of hydrogen is to use fossil fuels like coal or natural gas as feedstock.’14 He observes: ‘The prospect of hydrogen fuel cell futures eventually being based on clean renewable energy hinges on development of less expensive ways of harnessing those energy forms.’15
While recognizing the potential of hydrogen, patent offices must be alert to patent applications which are spurious, misleading, or even fraudulent.16 The patent administration was tested by Dr Randell Mills and by his company BlackLight Power Inc.’s patent applications for technology, which allegedly represented a new source of chemical energy from hydrogen.17 Newman J considered that the US Patent and Trademark Office (USPTO) was acting within its authority and power to withdraw the grant of BlackLight's patent: ‘The Patent and Trademark Office's responsibility for issuing sound and reliable patents is critical to the nation.’18 This analysis considers how patent offices in various jurisdictions have confronted such challenges.
In his book, Keith Tutt provides a history of Dr Mills and BlackLight.19 He summarizes the grand, outlandish claims of the scientists for this research:
The company filed patent applications with the USPTO, the United Kingdom Intellectual Property Office, and the European Patent Office.
Mills's claims for his BlackLight technology are not small: first, he believes he has developed an entirely new energy source. He says that it's a safe, pollution-free method of getting high-grade energy from hydrogen, which will soon be running our electrical power stations. If that weren't enough, he has also built an integrated theoretical model around his discoveries. He claims that his work will bring the rule of Einstein and quantum mechanics to an end. This, he confidently asserts, is the Holy Grail of physics: a grand unified theory – a theory that finally brings together all the forces of nature into one relationship.20
BlackLight filed a series of five patent applications for technology in the USA, claiming a new source of chemical energy from hydrogen. In February 2000, a patent was granted by the USPTO for ‘Lower-energy Hydrogen Methods and Structure’.21 The abstract observed that the patent related to ‘methods and apparatus for releasing energy from hydrogen atoms (molecules) by stimulating their electrons to relax to quantized lower energy levels and smaller radii (smaller semimajor and semiminor axes) than the “ground state” by providing energy sinks or means to remove energy resonant with the hydrogen energy released to stimulate these transitions’.
Jeffrey Melcher, the patent lawyer for BlackLight, enthused about the issuance of the patent:
Mills boasted: ‘This is more fundamental than the light bulb or the internal combustion engine.’23
This marks a historic event in the field of energy production. By issuing this patent, the Patent Office has recognised that Dr Mills's energy cell and method of extracting energy from hydrogen has utility and is novel over conventional methods of producing energy. In securing his patent rights, Mills presented to the Patent Office over whelming evidence that his energy cell and method provide an unlimited source of power never both contemplated.22
In response to the grant of this patent, Professor Robert Park of the University of Maryland was outraged: ‘I am shocked that they issued a patent on this. This indicates that the troubles at the patent office continue.’24 He had discussed the work of Mills in an article, ‘The Alchemists of Energy’:
Park has used the BlackLight patent application as an example of phony physics in his book, Voodoo Science: The Road from Foolishness to Fraud.26
A number of prominent scientists, including Nobel laureates, have publicly dismissed Dr Mills’ claim as nonsense … You could dismiss this hydrino notion as just another laughable attempt to repeal the laws of physics, but for one thing. Some people with deep politics are taking Dr Mills very seriously.25
Prompted by such outside alarm, Esther Kepplinger, Director of the USPTO's Examining group, reviewed the application and declared that her ‘main concern was the proposition that the applicant was claiming the electron going to a lower orbital in a fashion that I knew was contrary to the known laws of physics and chemistry’.27 She expressed concern that the '294 application ‘possibly had serious and substantial patentability problems and asked me to withdraw it from issue for further review’.28 Kepplinger indicated that she was concerned that the '294 technology involved ‘cold fusion’ and ‘perpetual motion’.29 She also stated that the USPTO intended to withdraw from issue the four other pending patents.
In BlackLight Power, Inc. v Dickinson, Sullivan J considered whether Q Todd Dickinson, Commissioner of the USPTO, violated the Administrative Procedure Act (APA), when the Office withdrew the patent and threatened to withdraw the four other applications after the plaintiff had received a ‘Notice of Allowance and Issue Fee Due’ and paid the issue fee.30 The judge rejected BlackLight's arguments:
In a footnote, the judge expressed concern that the USPTO had accepted such a dubious patent application at all: ‘Defendant claims that the technology of the '294 application contravenes fundamental laws of chemistry and physics, yet the application was approved by a patent examiner, never reviewed by a supervisor, and would have issued as a patent but for the PTO's eleventh hour withdrawal.’32
The Court is persuaded by the defendant's argument. The unpatentability subsection functions as a last-chance procedural measure to enable defendant to observe the PTO's central mandate of issuing viable patents. It is not a final pronouncement of unpatentability. The March 22, 2000 Decision informed plaintiff of this posture; it stated that the Director's decision to withdraw the patent from issue did not constitute either a rejection or an adverse action on the ultimate determination of unpatentability. Plaintiff has remedies outside this suit and this Court. Those remedies undermine plaintiff's suggested interpretation of the statute. Any subsection (3) determination of unpatentability will necessarily represent only a possibility of unpatentability, since such a determination, as defendant has made abundantly clear, is not in any way a final rejection. The PTO's withdrawal of plaintiff's patent application in order to reconsider its patentability was neither arbitrary nor capricious.31
In BlackLight Power, Inc. v Rogan, Justice Pauline Newman provided a written judgment on behalf of the Court of Appeals for the Federal Circuit.33 She noted: ‘The question on appeal is whether the Director of the Patent and Trademark Office had the authority summarily to withdraw BlackLight's patent application from issue, following Notice of Allowance, payment of the issue fee and notification of the issue date, and with publication of the drawing and claim in the Official Gazette.’34 In her opinion, ‘We conclude that such withdrawal was within the scope of the Director's authority and responsibility for performing the mission of the Patent and Trademark Office, when viewed in light of the unusual circumstances of this case.’35
Newman J considered that the USPTO was acting within its authority and power to withdraw the grant of BlackLight's patent:
The judge affirmed that ‘The PTO's responsibility for issuing sound and reliable patents is critical to the nation’,37 adding: ‘When necessary in order to fulfil the PTO's mission, with safeguards to the interests of the applicant including fair and expeditious further examination, we agree with the district court that the action taken is a permissible implementation of the statute and regulation.’38 The judge concluded: ‘It has not been shown that the PTO's exigent action was unreasonable in view of the scientific concerns of the Group Director and the imminent issuance of the patent’.39
The object and policy of the patent law require issuance of valid patents. This responsibility, and the mission of the PTO, require authority to implement § 151 by taking extraordinary action to withdraw a patent from issue when a responsible PTO official reasonably believes that the subject matter may be unpatentable and that the application may have been allowed in error. The complexity of the examination process, and the potential for error in any human activity, weigh on the side of according the PTO latitude to withdraw an application from issue without a final determination of unpatentability when the exigencies of time do not allow for such determination. The decision to withdraw the application was made by PTO officials acting within their authority and in fulfillment of their obligation to assure that patents are properly examined, and valid.36
In the UK, there was a similar case dealing with the controversial technology. BlackLight had filed a pair of patent applications: GB 0521120.6, related to a plasma reactor which generated power and novel hydrogen species, while GB 0608130.1, related to a laser which operated using the same hydrogen species. Both patents were based on applications under the Patent Cooperation Treaty.
The examiners assigned to the applications both objected that the hydrino proposed by BlackLight was contrary to generally accepted physical laws and was therefore incapable of industrial application in the sense required by section 1(1)(c) of the Patents Act 1977. They further objected that, as the claimed inventions relied for their performance on the existence of the hydrino, the specification did not comply with the requirement for sufficiency in section 14(3) of the Act.
The Hearing Officer upheld these objections. In 2008, Mr Marchant, Deputy Director, acting on behalf of the Comptroller of Patents, rejected the two applications. The Hearing Officer considered whether Mills’ ‘Grand Unifying Theory of Classical Quantum Mechanics’ was true and observed:
The Hearing Officer then pointed out that the theory was clearly inconsistent with existing generally accepted theories. First, ‘if the hydrogen atoms can exist in an energy state lower than the lowest state predicted by quantum mechanics, why do the hydrogen atoms with which we are familiar not convert spontaneously to a lower state?’41 Secondly, ‘ … in [Randell's Grand Unifying Theory of Classical Quantum Mechanics], the hydrogen atoms are said to have smaller radii than the smallest allowed for by applying standard physics’. The Hearing Officer concluded:
If, as in the present case, an applicant proposes a new theory and claims an invention dependent on it, it would be unfair to the applicant if the patent was refused but the theory turned out to be true. If on the other hand patents were allowed to be granted on inventions depending on any theory, however speculative, then in the words of Paez's Application (BL O/176/83) “it would be completely wrong and against the public interest to bestow upon misleading applications the rights and privileges of a granted patent”. I consequently take the view that it is appropriate to demand a real but moderate level of confidence in the truth of the theory. I will therefore make the assessment on the basis that it should be more probable than not that the theory is true if I am to allow the applications to proceed.40
In BlackLight Power Inc. v The Comptroller-General of Patents, Floyd J (Patents Court) heard BlackLight's appeal,42 which was based mainly on the submission that the Hearing Officer had wrongly directed himself when he held that ‘the appropriate test for claims which relied upon a new theory was whether it was more probable than not that the theory was true’.43 BlackLight argued that the correct test was whether the theory is clearly contrary to well-established physical laws.
It seems to me on the evidence supplied to me by BlackLight that there is substantially no acceptance of the theory by the physics community … In summary, it appears that [Randell's Grand Unifying Theory of Classical Quantum Mechanics] upon which these inventions depend, does not reach the threshold that I set for this assessment, namely that it should be more likely than not that it provides a valid description of atomic systems.
On the question of the correct standard, Floyd J provided these directions:
The judge noted: ‘The word “clearly” … merely establishes that where there is a reasonable and substantial factual dispute (“a debatable factual question”) about whether the invention does offend against physical laws, then the objection should not be pursued.’45 He then commented on the larger question of patentability:
It is not the law that any doubt, however small, on an issue of fact would force the Comptroller to allow the application to proceed to grant. Rather he should examine the material before him and attempt to come to a conclusion on the balance of probabilities. If he considers that there is a substantial doubt about an issue of fact which could lead to patentability at that stage, he should consider whether there is a reasonable prospect that matters will turn out differently if the matter is fully investigated at a trial. If so he should allow the application to proceed. I think this approach to the consideration of objections to patentability is in accordance with the statutory framework.44
The judge explained:
[The] UKIPO routinely rejects applications for perpetual motion machines. The examiner objects that the invention appears to contravene established physical laws. The applicant is given an opportunity to demonstrate that it does not, or that his invention works. If, or rather when, he fails to do so the application is rejected. It would not be enough for the applicant to say that, given further time, he could produce a working model. In those circumstances there is no reasonable prospect that matters will turn out differently on a fuller investigation.46
He observed that there was a similar direction in the UKIPO's Works Manual:
The European Patent Office Guidelines for Examination contain a passage concerned with inventions which operate inconsistently with well established physical laws in the section dealing with capability of industrial application at Part C Chapter IV section 5.1: … : “One further class of ‘invention’ which would be excluded, however, would be articles or processes alleged to operate in a manner clearly contrary to well-established physical laws, e.g. a perpetual motion machine.”47
In a case note, Raphael Prais considers the implications of the ruling, noting:
Processes or articles alleged to operate in a manner which is clearly contrary to well-established physical laws, such as perpetual motion machines, are regarded as not having industrial application, as was held in Paez's Application (BL O/176/83) and Webb's Application (BL O/84/88).48
The commentator observes: ‘Intuitively it feels correct that common inventions that fly in the face of accepted science, like the perpetual motion machine or the anti-gravity machine, should not be patented.’50 Nonetheless, ‘This principle … could be embodied in a distinct rule.’51
Mr Justice Floyd ruled that the Comptroller should not refuse a patent application if there is a reasonable prospect that, should the expert evidence be examined, the underlying theory would be proved true. On the one hand, this article has highlighted problems with the legal reasoning and unexamined philosophical assumptions. On the other hand, it is a sensible and pragmatic ruling - an invention such as the perpetual motion machine would fail because the examiners know it is impossible; however, if there is a reasonable chance that the invention would work in practice, the patent would be granted and it would be for the scientific community and for investors to make up their own minds as to whether the invention would work.49
European Patent Office
BlackLight has made a number of attempts to patent various applications in the European Patent Office (EPO).
In 1996, BlackLight filed a patent application for ‘lower-energy hydrogen methods and structures’ in the European Patent Office.52 In March 2009, the EPO informed BlackLight that the application did not meet the requirements of the European Patent Convention. The substantive examiner, Eros Capostagno, observed:
In July 2009, BlackLight submitted revised claims for claims 1 and 25 for the process of examination.
Claims 1, 25 do not meet the requirements of Article 84 EPC in that the matter for which protection is sought is not defined. The claims attempt to define the subject-matter in terms of the results to be achieved … In particular the claims pretend to react hydrogen atoms with the catalyst … Apart from the fact that every exothermal reaction releases energy by definition, there is no indication in the claims about the means for obtaining such results, so leaving the reader in doubt as to the meaning of the technical features to which the claims refer, thereby rendering the definition of the subject-matter of said claims unclear.53
The EPO examination guidelines of 2010 observe that perpetual motion machines are excluded from the definition of an invention:
The guidelines also note that there are inherent problems with disclosure in respect of perpetual motion machines: ‘The second instance is where successful performance of the invention is inherently impossible because it would be contrary to well-established physical laws – this applies e.g. to a perpetual motion machine.’55 The guidelines observe: ‘If the claims for such a machine are directed to its function, and not merely to its structure, an objection arises not only under Art. 83 but also under Art. 52(1) in that the invention is not “susceptible of industrial application”.’56
“An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture”. “Industry” should be understood in its broad sense as including any physical activity of “technical character”, i.e. an activity which belongs to the useful or practical arts as distinct from the aesthetic arts; it does not necessarily imply the use of a machine or the manufacture of an article and could cover e.g. a process for dispersing fog or for converting energy from one form to another. Thus, Art. 57 excludes from patentability very few “inventions” which are not already excluded by the list in Art. 52(2). One further class of “invention” which would be excluded, however, would be articles or processes alleged to operate in a manner clearly contrary to well-established physical laws, e.g. a perpetual motion machine. Objection could arise under Art. 57 only insofar as the claim specifies the intended function or purpose of the invention, but if, say, a perpetual motion machine is claimed merely as an article having a particular specified construction then objection should be made under Art. 83.54
Surveying decisions, Christopher Wadlow has considered the EPO's approach to patents for perpetual motion machines.57 He reflects, somewhat romantically and sentimentally, upon the enduring nature of perpetual motion machines:
Perpetual motion machines are back, but then, they never really went away. It may just be my imagination, but if you listen carefully outside the old Patent Office building at dead of night, then can you faintly hear the click and whirr of working models which some Victorian Comptroller once demanded as proof of their viability, only to rule that such occult and dangerous knowledge must forever be suppressed? Far too subversive of conventional science ever to be made public, too beautiful and precious to destroy, and too fragile to move, they softly hum the music of the spheres, defying time itself. But I must admit it is just an illusion. Perpetual motion machines exist only in the imagination, but that is where they belong, and it would be a duller world without them.58
The need for vigilance
Even as they seek to encourage research and development in clean technologies, through mechanisms like fast-tracks for ‘green’ applications, patent offices around the world must remain alert to fraud, hoaxes, scams, and swindles. In his novel, Solar, Ian McEwan reflects upon how challenges of energy demands, climate change, and global warming have inspired an array of inventions:
In order to protect the credibility and the legitimacy of the patent system, patent examiners must be vigilant and sceptical, and careful to weed out patent applications of dubious character—such as the BlackLight patent applications for free energy derived from hydrogen.
Some proposals used water as a fuel for cars, and recycled the emission – water vapour – back into the engine; some were versions of the electric motor or generator whose output exceeded the input and seemed to work from vacuum energy – the energy supposedly found in empty space – or from what Beard thought must be violations of Lenz's law. All were variants on the perpetual-motion machine. These self-taught inventors seemed to have no awareness of the long history of their devices, or how they would, if they actually worked, destroy the entire basis of modern physics.59
Further thought is needed as to how patent regimes deal with cases of scientific misconduct and scientific fraud. This problem is certainly not unique to clean technologies, given past controversies over topics, such as cold fusion, and Woo-Suk Hwang's cloning research.60
Dan Burk has observed that this field has received increasing attention from academics, regulators, and the media:
He wisely observes that ‘the issue of scientific misconduct promises to play a pivotal role in defining the state of science for the foreseeable future’.62 Arguably, patent offices need to be provided with broader discretion to deal with scientific misrepresentation, and fraud; and there needs to be a greater array of sanctions and penalties for such misconduct within the patent system.
The problem of fraud and misconduct in the course of scientific research has become a topic of national and international attention. Once a matter reserved for insular, professional concern and study by esoteric sub-specialties of sociology, scientific misconduct has become the subject of front-page media attention, and the obsession of indignant Congressional committees. Oceans of ink have been spilled in contemporary legal, historical, and social analysis of this topic, as learned societies, outspoken attorneys and investigative reporters have all offered their perspective on the question.61