G 1/23: Reductio Ad Absurdum

The reductio ad absurdum logical argument is a well known way of disproving an initial statement by showing that it leads to an absurd conclusion. If the initial statement is either true or false, the argument when properly applied inevitably leads to the conclusion that the opposite must be true. A well known application of the argument is the proof that there are infinitely many prime numbers, which dates back to ancient Greek times and is attributed to Euclid. The proof starts by assuming there are not infinitely many prime numbers and figuring out the consequences. Following a series of logical steps, it can be clearly shown that the statement cannot be true because there is a number that is the product of all primes plus 1 that is either itself prime or cannot be divided by any prime, meaning there must be a prime number greater than all the primes initially assumed. Therefore, the initial assumption must be wrong and there must instead be infinitely many prime numbers. 

I have never before seen this type of argument being used in legal decisions, probably because legal analysis is typically quite different and is rarely as clear cut as to be amenable to logical proof. The recent decision of the Enlarged Board of Appeal in G 1/23 is the first example I am aware of that actually uses this argument, which it does in coming to an apparently definitive answer to the question of whether a product that is put on the market must be reproducible by the skilled person to be considered part of the state of the art. 

The argument is used by the EB to reject an interpretation of the prior decision G 1/92 that a non-reproducible product would be entirely excluded from the state of the art. The EB first assumes that this interpretation of G 1/92 is true, i.e. that a product put on the market, if not reproducible (i.e., the skilled person cannot manufacture it from scratch using different starting materials), is entirely excluded from the state of the art. This means the product, including all its properties, is treated as if it does not exist for the purposes of assessing novelty and inventive step under Articles 54(2) and 56 EPC (see point 44).

The EB then explores the logical implications of this assumption, focusing on the concept of reproducibility and the skilled person’s reliance on common general knowledge, which is derived from the state of the art (points 50–54). The skilled person’s common general knowledge is limited to what is part of the state of the art. If non-reproducible products are excluded from the state of the art, they cannot be part of the skilled person’s common general knowledge (point 57). The EB interprets “reproduce” as manufacturing the product by a different route, not simply obtaining it from the market (point 38). Thus, the skilled person must rely on starting materials that are themselves reproducible and part of the state of the art to recreate the product (point 58). To reproduce a product, the skilled person must use starting materials that are reproducible. However, these starting materials themselves require precursor materials, which must also be reproducible, and so on (point 59). This creates a regress where every material must be reproducible without relying on merely available (but non-reproducible) materials, such as naturally occurring substances or chemical elements (point 60). The EB then argues that this assumption leads to an absurd result: if only reproducible materials can be considered part of the state of the art, then no material in the physical world would qualify as state of the art. This is because all materials ultimately rely on non-reproducible starting materials, such as chemical elements or naturally occurring substances like crude oil, which cannot be synthesized from scratch by the skilled person (points 60–63). For example, chemical elements (e.g., carbon, oxygen) cannot be reproduced; they are taken from nature or the market. Even simple compounds or raw materials (e.g., crude oil) are not trivially reproducible, yet they are undeniably part of the technical reality the skilled person works with (point 61). If non-reproducible products are excluded, the state of the art becomes an “empty set” (point 65), meaning that no technical teachings, whether from products, documents, or oral disclosures, could be considered prior art, as they all depend on non-reproducible materials at some point. This outcome is described as “manifestly absurd” (point 72) because it contradicts the practical reality that skilled persons routinely use commercially available or naturally occurring materials in their work (point 67). Since the assumption that non-reproducible products are excluded from the state of the art leads to the absurd conclusion that the state of the art is empty, the assumption must be false. Therefore, the EB concludes that a product put on the market cannot be excluded from the state of the art solely because it is not reproducible (point 80). Instead, the product and its analysable properties are part of the state of the art, regardless of reproducibility, as long as they are publicly available (Headnote I and II). As a result, the EB reinterprets G 1/92 to align with this conclusion, concluding that “reproducibility” should include obtaining the product from the market in its readily available form, rendering the enablement requirement redundant (point 73). This ensures that commercially available products, even if not reproducible by manufacturing, are part of the state of the art, and their analysable properties can be considered for novelty and inventive step assessments (point 74).

The reductio ad absurdum argument used by the EB is effective here because it shows that the enablement requirement, as suggested by an interpretation of G 1/92, leads to an impossible and impractical outcome, which would exclude all materials from the state of the art. This contradiction with technical reality and the purpose of patent law (to assess inventions against what is publicly available) forces the rejection of the enablement requirement for products that have been put on the market. The argument underscores that the state of the art should include all publicly available technical information, regardless of whether the skilled person can replicate the product from scratch. 

G 1/24: The Return of the Angora Cat

I wrote some thoughts about the then pending case of G 1/24 back in October 2024. As it turned out the Enlarged Board came to roughly the same conclusion, at least on the first two questions. You will all have read the decision already, but just for reference here was the conclusion from the Enlarged Board:

The Angora cat is angry.

"The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation."

This seems to be fairly clear, at least in the context of the opposition case that led to the referral. This was all about whether a clear term in a claim should be interpreted more broadly than a normal reading would suggest if the description provided a broader definition. The EB's decision indicates that it should. Most would agree that this is a good thing, since patent proprietors should not be permitted to defend their patent with a narrow interpretation and then have the option open afterwards to interpret the claim more broadly to cover infringers. This would most likely not happen in the case such as in G 1/24, since courts across Europe, including the UPC, all agree that the description and drawings should be used to interpret the claims. The Angora cat in cases such as this therefore seems to have been put down. 

G 1/24 will already be having an effect on opposition cases now underway, where opposition divisions will be pointed towards the description and drawings where a particular term in a claim should be given a broader meaning. This should be good for opponents, who should now be able to argue more successfully for some claim features being broader and therefore more likely to be covered by the prior art. There are, however, always unintended consequences. 

An example of potential unintended consequences arose very recently during opposition oral proceedings in a case for which I was the representative for the opponent. Claim 1 of the patent in question, which was very poorly drafted (at least by UK standards), had various terms that were broad or unclear and required interpretation. For the opponent, I interpreted the claim broadly so as to cover the prior art, which it did. The preliminary opinion of the opposition division agreed, finding claim 1 of the patent to lack novelty, along with various auxiliary versions the proprietor had submitted. Nothing then happened until the oral proceedings, with the proprietor not even submitting any written submissions in advance. At the hearing, however, the proprietor submitted a further request to add more features to claim 1 from the description and proceeded to argue on the basis of G 1/24 that the claim features should be interpreted narrowly to be clear, novel and inventive over the prior art. What concerned me, (other than the frustratingly late submissions and the OD's decision to admit them) was that G 1/24 is now being used by attorneys to argue for claim features to be interpreted narrowly based on the description in order to get around the prior art. What was more concerning though was that the OD appeared receptive to these arguments and ended up maintaining the patent as amended, even though claim 1 was still fundamentally flawed in various ways. Is this perhaps an early sign that G 1/24 is being used to bring back the Angora cat in another form, allowing unclear and badly drafted claims to be made allowable on the basis of the description filling in the gaps? One case is of course not representative, and this is only my immediate impression, but if the argument can be made then others will surely also try. I can see this kind of thing ending up in T decisions before too long.

Another problem with dates

Working in patent practice requires, among other things, a keen eye for due dates. Getting a due date wrong by just one day can make a big difference. This can sometimes make all the difference for a patent application, as a recent example I wrote about here demonstrated. There are many other instances of critical due dates under the UK Patents Act and Rules where it is very important to know when a particular period ends. 

I wrote a long while ago about a decision from the UK IPO (Rigcool v Optima Solutions), in which the issue was about how to calculate the end of "a period of two years beginning with the date of grant" under Section 37(5) (as it was then worded), in relation to when proceedings for entitlement could be commenced for a granted patent. Did the period end on the day of the anniversary of grant or the day before? Following reasoning derived from how the term of a patent under Section 20 is calculated, this was determined to be the latter, i.e. the last day on which entitlement proceedings could be initiated was the day before the anniversary. This turned out to be very important in the case in question, since the claimant had filed on the anniversary of the date of grant, which was determined on this basis to be one day too late. 

Following that case, some amendments were made to the Patents Act and Rules by The Patents (Amendment) Rules 2011 (SI 2011 No. 2052) and the Intellectual Property Act 2014, which adjusted the wording used in various places in the Rules and Act respectively to clarify that any periods specified were supposed to end on the anniversary and not the day before. One example in the Rules was the period under Rule 32 for making a request for reinstatement of an application. This was one of the periods that was previously specified as being "beginning with", which was then changed to "beginning immediately after". The relevant period under Rule 32 was then defined as "twelve months beginning immediately after the date on which the application was terminated". The situation was then made clear that the period would end on the anniversary and not the day before. Or so we may have thought. 

In a recent judgment from the High Court in Ahmad v Comptroller-General of Patents, Designs and Trade Marks [2025] EWHC 936 (Pat), Mr Justice Mellor decided on an appeal by the claimant Mr Ahmad in relation to his patent application, which had been refused by the UK IPO in 2021. Mr Ahmad made various accusations and complaints about being badly treated by the UK IPO, accusing the Office of "malicious comments that are illegal and against all the guidelines with lots of fraud", among other things. It was fairly clear that Mr Ahmad, who was self-represented, was not particularly familiar with the usual way of prosecuting patent applications in the UK and was somewhat chaotic and unreasonable in his dealings with the UK IPO. Faced with Mr Ahmad's numerous failings and utterly hopeless arguments, Mellor J had no difficulty in striking out his claim by summary judgment, finding Mr Ahmad's claims to be totally without merit. One of the points raised was whether Mr Ahmad could have requested reinstatement of his application, which he failed to do. This was certainly not a deciding factor in the case, but Mellor J noted what the due date for making such a request would have been, calculating it in the following way: 

"The termination of the application was effective on 31 August 2021 (one day after the two month extension window elapsed following 30 June 2021). By operation of r. 32 (under s.20A) the applicant is then given a generous, but fixed, deadline within which to seek reinstatement. In Mr Ahmad's case, it was a deadline of 31 August 2022: twelve months after the application was terminated on 30 August 2021. That period is set by r. 32(1) and –(2) PR07, and is not extendable: see r. 108(1) PR07 and its Sch. 4 Part 1" (paragraph 50, emphasis in the original).

The letter from the UK IPO that started the period for requesting reinstatement referred to the application not being in order for grant on 30 August 2021, indicating that it was treated as having been refused on that date. The period under Rule 32(2) was therefore defined based on this date, being the date on which the application was terminated. Mellor J calculated, however, that the final date on which a request for reinstatement could be made would be 31 August 2022. Given all the history behind why the particular wording of Rule 32(2) as it now stands was arrived at, this seems to be wrong. The correct due date should actually have been 30 August 2022. It made no difference in that case but it is slightly concerning that a High Court judge can get this wrong. Perhaps the wording currently used is not as clear as we might think. 

Description Amendments - Finally a Referral?

We have been waiting a long time for a Board of Appeal to finally refer questions to the Enlarged Board on the long-running controversy of whether, or to what extent, amendments to the description are required for European patents and patent applications. Given recent developments, we may now be getting near the point where this actually happens.

In brief, the issue of description amendments is, as far as the EPO is concerned, a settled matter. In their view it is necessary for the description to be in line with the claims to avoid any inconsistencies. According to the current version of the Guidelines for Examination, F-IV, 4.3, "The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking appropriately so that it is clear that they do not fall within the subject-matter for which protection is sought". In many cases, this leads to extra time and trouble being expended when attempting to get an application allowed. Many have also objected that the supposed justification for this requirement simply is not there in the EPC. Article 84, which is used by the EPO in support, simply requires the claims to be "clear and concise and be supported by the description". If the description provides support for the claimed invention, does it even matter if it also includes support for things that are not part of the claimed invention? There are also cases where it may not be clear where the line should be drawn between what is described in the application as a whole as embodiments and what is actually within the scope of the claimed invention. Forcing applicants, and their attorneys, to make a decision during prosecution that can affect how the invention may be interpreted post-grant (since courts invariably insist that the description is always used to interpret the claims) may be considered unfair, if not actually unjust. 

Those of us who have been keeping a close eye on this thought that we were going to get a referral last from the appeal case of T 56/21. In the end, however, the Board decided that a referral was not needed because in their view Article 84 did not provide any justification for amendments to the description at all. I wrote last year about this lengthy decision here. The EPO, however, has been taking no notice at all of the decision (which is, of course, only binding on the case in question) and maintains that their practice is justified. The Guidelines therefore remain unchanged. 

However, in another appeal case, T 697/22, there has been some movement on the matter. Following oral proceedings held in December 2024, the Board indicated that they were minded to refer questions to the Enlarged Board. A communication has recently issued with some proposed questions, which the Board has asked the parties involved to comment on before they make a decision on a referral. Unlike in T 56/21, the Board found that there was divergent case law on the subject of description amendments and a referral may be needed to resolve the question of whether these were in fact required. The proposed questions are the following:

1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendments introduce an inconsistency between the amended claims and the description of the patent, is it necessary to comply with the requirements of the EPC, to adapt the description to the amended claims such that the inconsistency is removed? 

2. If the first question is unconditionally answered in the affirmative, which requirement of the EPC necessitates such an adaptation? 

3. If the first question cannot be unconditionally answered in the affirmative, what are the conditions under which adaptation of the description is necessary to comply with the requirements of the EPC? 

4. Would the answer to these questions change if an inconsistency existed between the claims and the description of a European patent application?

The parties have been given until 26 May 2025 to provide comments, following which the Board will decide whether a referral is to be made, and if so what the final form of the questions should be. 

For now, all we can do is wait and see what happens. It is, however, interesting to note that the draft questions avoid mentioning Article 84 EPC at all. This is clearly deliberate, since question 2 asks whether there is any provision in the EPC that requires the description to be adapted to the claims. If T 56/21 is to be followed, there is in fact no such provision. The Enlarged Board, however, may find differently. 

Faketoshi Patent Oppositions - The Story So Far

For the past few years, in my spare time I have been working on oppositions against three European patents granted to nChain Licensing AG, each of which originated from GB priority applications filed in April 2016. Each patent named Craig Wright and fellow Australian Stephane Savanah as co-inventors. For those few people who may still be unaware, Wright has since 2015 been falsely and fraudulently claiming to be the person behind the pseudonym Satoshi Nakamoto, the creator of Bitcoin. Wright's implausible, and easily disprovable, claims were disputed in late 2015 almost as soon as they became public through engineered leaks to the press. It was, however, only after several lengthy, and extremely costly, legal battles involving many others (including myself), that his claims were finally and comprehensively demolished by Mr Justice Mellor in a mammoth judgment handed down on 20 May 2024 (Crypto Open Patent Alliance v Craig Steven Wright [2024] EWHC 1198). The judgment was appealed by Wright, but permission was denied by Lord Justice Arnold in, for him, an unusually brief 3 page judgment issued on 29 November 2024. There are further strands to the Craig Wright story, including a contempt of court finding, alleged tax fraud in both the UK and his native Australia and a likely upcoming criminal prosecution for perjury, but here is not the place to go into them.  

Going back to the beginning, the company nChain was set up in 2016 by Wright and his business partner Stefan Matthews, with help from Canadian businessman Robert MacGregor, and enabled by substantial financial backing from Antiguan-based Canadian online gambling tycoon Calvin Ayre. The stated business aim of the company was to patent and commercialise inventions arising from Wright's alleged extensive knowledge of Bitcoin and related technology by virtue of his being Satoshi. As explained in the 2016 article by Andrew O'Hagan, "The Satoshi Affair":

They would complete the work on his inventions and patent applications – he appeared to have hundreds of them – and the whole lot would be sold as the work of Satoshi Nakamoto, who would be unmasked as part of the project. Once packaged, Matthews and MacGregor planned to sell the intellectual property for upwards of a billion dollars. MacGregor later told me he was speaking to Google and Uber, as well as to a number of Swiss banks. ‘The plan was to package it all up and sell it,’ Matthews told me. ‘The plan was never to operate it.’

The infamous "1Feex..." paper wallet.

Even at that time, it was evident to anyone who took the time to look into the matter that Wright was clearly not Satoshi but was a rather inept forger with a particular talent for bare-faced lies. Some, however, apparently remained persuaded (or perhaps were willing to go along with the lies for their own reasons), including Mr Ayre who continued to fund Wright's Satoshi project on the promise of a big payout in the future, not only in respect of the supposedly valuable patentable Satoshi inventions but also on some very large stashes of Bitcoin that Wright claimed to own and which were apparently used as collateral.  

nChain GB filings 2016-2024

So, after having conveniently departed Australia in October 2015 following a raid by the Australian Tax Office, Wright began working as Chief Scientist for nChain in his new base in London to get his  supposed inventions patented. Wright was also incentivised by getting a substantial share in the company. The patent filings started flowing in to the UK IPO, the first one being filed on 23 February 2016 in the name of EITC Holdings Limited (later assigned to nChain). 76 applications in total were filed in 2016 and applications continued to be filed at a similar rate each year right up to the end of 2023, at which point they appear to have come to an abrupt and almost complete halt. 

Wright and friend (not a patent attorney)

Wright, of course, did not do this all by himself but was assisted by people who supposedly knew what they were doing with preparing and prosecuting patent applications. We would normally term these people patent attorneys but I am reluctant to do so in this case because, as it turns out, the main person involved in preparing and filing Wright's applications, at least in the early days, was not actually a patent attorney. She was instead a fairly recently graduated computer scientist PhD with a few years' experience working with patents but had not yet passed the UK examinations. Wright, however, got on very well with her and continued to employ her services right up until at least last year, even though she has still not passed the UK exams. Although the inventions themselves may not have been of the highest quality given their provenance, it certainly did not help that they were turned into patent applications that, at least to some extent, were somewhat handicapped by fairly poor drafting. As it turns out, one of the cases was also not helped during prosecution by some poor handling by others leading up to it being granted. 

I started looking into Wright's patenting activities in around 2020 and first wrote about them here in February 2021, noting that nChain had already built up a substantial patent portfolio with over 300 priority filings, which then resulted in other filings that were prosecuted more widely in other jurisdictions, including at the European Patent Office. At the time I wondered about their technical relevance, given that Wright's relevant knowledge was clearly not going to be important or relevant for any developments in Bitcoin or related technologies. Nevertheless, nChain was already demonstrating that whatever strategy was being used was starting to bear fruit, with patents being granted by the EPO. Many of these patents appeared to me, based on a limited review, to be examples of what I termed 'cargo cult patenting', as they appeared to contain overly technical-sounding, and sometimes lengthy, claims that were able to get through the examination process but which were highly unlikely to be infringed by anyone. It appeared, however, to be mainly a numbers game at that point, where the number of patents being granted was the main aim and not whether the patents covered anything actually useful. The reasoning may well have been that, if a sufficiently large patent portfolio could be built up, it would almost inevitably be considered worth a lot of money to someone and would then be bought up by a big player in the field who wanted to get a position in this up and coming blockchain technology area. It almost didn't matter what the patents covered, as long as they sounded sufficiently technical and their importance could be puffed up by Wright with his brash salesman bravado. After all, Theranos managed to do something similar, at least for a while. 

As a result of the technical obfuscation technique used to get many of their patents through the system, the prospects of finding any of the patents that might be a good enough target for opposing seemed to me unlikely. A particular group of applications, however, came to my attention that were an example of one of Wright's nonsense ideas, which was that Bitcoin could be made "Turing complete". How this was possible when the language used to run Bitcoin transaction scripts did not allow for loops was at the time unclear to anyone actually knowledgeable in the field, but Wright continued (and still continues) to insist that Bitcoin could be made Turing complete by using transactions as logic gates and doing loops off the blockchain. What the point of all this was is still not clear, but nChain's patent attorneys (real ones this time) managed to get 3 patent applications through the EPO's normally rigorous examination system, resulting in EP3449450 granted in June 2022, EP3449451 granted in July 2022 and EP3449452 granted in June 2022. I wrote about the first one of these patents, and the issues around Turing completeness, in November 2022, shortly after an opposition was filed by Arthur van Pelt with my assistance and with financial help from various generous Bitcoin supporters. 

Craig Wright's opinion of the first opposition. 

The first opposition, which was labelled "Faketoshi01" for ease of reference, was all about added matter. For the full details, see the post mentioned above. In short, the problem with the patent was that claim 1 had been amended during prosecution in a way that added matter (not allowed under Article 123(2) EPC). This was not noticed by either the patent attorney who did the amending or by another attorney who signed it off, nor was it noticed by the 3 member examining division at the EPO, who allowed the application. Once granted, the patent was fatally flawed because the only way to correct the added matter issue would have been to remove it. Unfortunately for the patentee, this was also not allowed (under Article 123(3) EPC) because this would inevitably broaden the scope of the patent. The patent was therefore stuck in an added matter trap that was impossible to get out of. Once the opposition was filed, it was inevitable that the only outcome could be revocation. Nonetheless, nChain's patent attorneys tried anyway and ended up making things worse. In the end, shortly before oral proceedings were due to be held to decide the matter, nChain switched patent attorneys and their new representatives clearly saw that the problem was insurmountable. Instead of fighting a battle they knew they could not win, they threw in the towel and asked for the patent to be revoked. The patent was then revoked in May 2024 without any fight. This decision was final and no appeal was filed. 

The second opposition (Faketoshi02) was filed in March 2023 against EP3449452. This time, the issues were not about added matter but about novelty and inventive step. Claim 1 of the patent defined a method that would cover a process carried out by a conventional Bitcoin node that was well known before the 2016 priority date. In the opposition, the primary source of prior art was the 2014 book "Mastering Bitcoin" by Andreas Antonopoulos. This is such an important and useful piece of prior art because it goes into technical detail of how Bitcoin was known to work at the time, including details of the various opcodes used in Bitcoin transactions. Although it had already been cited during prosecution by the EPO examiner, nChain's representative had somehow managed to convince the examiner that there was some kind of difference in what was claimed compared to what was disclosed in the book. As argued in the opposition, this turned out not to be correct.

This time the proprietor fought back. An initial, rather inept, response was first filed by the representatives who got the patent granted, which again ended up causing more trouble than it was worth because it left nothing on file that was even admissible, let alone allowable. As with the first case, the attorneys then got switched and the new attorneys got to work by filing 15 sets of amendments to the claims in response to a preliminary opinion that was very much against them. At oral proceedings held on 26 September 2024, there was quite a fight over the first 7 of these sets of amendments but at this point the representatives decided to give up and throw in the towel, presumably realising they had nothing left. The EPO opposition division then decided to revoke the patent. A written decision issued on 4 November 2024.

The third opposition (Faketoshi03) was filed in April 2023 against EP3449451, again based on novelty and inventive step grounds. The proprietor's representatives, which were again switched after a failed first attempt, filed even more sets of amendments. At the oral proceedings on 24 September 2024, the Opposition Division surprisingly came up with added matter as a new ground of opposition. The proprietor's attorneys, being justifiably surprised at this (as was I), got the proceedings rescheduled to give them time to think a bit more. At the rescheduled proceedings held on 10 December 2024, the new added matter ground was upheld and the patent was revoked after only about 30 minutes of argument. Unfortunately for the patentee in this case, the added matter problem was the same for all their numerous requests so, once the first request fell all the others followed for the same reason. The written decision revoking the patent then issued on 23 December 2024. 

A hit rate of 3 out of 3 is not bad going, but for two of these we are not yet at the end of the story. For the second and third cases, the patentee decided to file appeals against the revocation decisions. I was slightly surprised at this because they had taken the precaution of filing divisional applications on each of them, all of which are currently still pending at the EPO, meaning that they could have another go at getting a patent without the limitations of post-grant amendments. However, given that appeals have been filed there is still the possibility, however remote, that they could rescue something and perhaps save face. So far, grounds of appeal have been filed on Faketoshi02, which have already been responded to, and grounds on Faketoshi03 are due in the next few days (Update 29 April 2025: grounds have now been filed and responded to). So far, the arguments from the proprietor/appellant do not look very impressive but we will probably have to wait at least another couple of years before we find out what the Board of Appeal thinks of them, given the large backlog of cases they have to deal with. More excitement is therefore yet to come. I shall, of course, keep you posted. 

UPDATE 17 September 2026: The appeal process for Faketoshi02&03 has now come to a final end. Oral proceedings before the EPO Board of Appeal were held today for both cases. I attended, representing the opponent Arthur van Pelt, while nChain was represented by their patent attorney from Gill, Jennings & Every. Arthur was also present as an observer. Faketoshi03 was dealt with first, as this was all about novelty and inventive step. The Board was thorough in dealing each of the 15 requests on file, which took about 5 hours in total to go through. In each case, following some extensive arguments from both sides, the Board found the requests not to be allowable for lack of inventive step (a slight change from the opposition decision, which found some to lack novelty instead). The Board then went straight on to dealing with Faketoshi02. I was expecting this to be short, given that the added matter problem appeared to be unsurmountable. The Board, however, had other ideas and, given that they had already discussed novelty and inventive step on the other case and since the inventions claimed in each case were very similar, they decided to look at novelty and inventive step first to avoid the possibility of the case being remitted to the opposition division (a sensible choice, as doing so might have dragged things out for another few years). The appellant picked out what was thought to be their best shot, which turned out to be auxiliary request 16 out of 17, and we had a little argument about whether this was novel and inventive. The Board found it not to be inventive because the distinction over the prior art in that case was just an arbitrary selection of an XOR gate, which was considered by the Board to be obvious to the skilled person. Following that, the process went very quickly, with the Board running through their reasons for finding all the other requests to lack inventive step, which the appellant did not have any further comments on. Once this was done, the added matter issue was in effect pointless, which all parties agreed with, and the Board then concluded that none of the requests was allowable. The Board finished with concluding that none of the requests on each patent was allowable, dismissing both appeals and upholding the decisions of the opposition division. The official written decision will follow later, probably in a couple of months. In summary, this was a complete success for the opponent and a rather embarrassing failure for nChain (although I must say their attorney did a valiant job in defending what turned out to be the indefensible). The whole process, which has taken nearly four years is now over.

A problem with dates

Knowing when a divisional application (or, more correctly, a new application under section 15(9)) can be filed is a tricky business in the UK. I have written previously here about how applicants and their representatives can sometimes get caught out by assuming that the same rules apply to those at the EPO. Unlike at the EPO, where the general rule is that a divisional can be filed provided there is a current application pending, in the UK the latest date for filing a divisional is 3 months before the end of the compliance period, provided the application is still pending. This additional requirement can cause problems when applications are still being prosecuted close to the end of the compliance period, especially if it's not yet clear what will get allowed. 

According to Rule 30, the compliance period is 4 years and 6 months from the filing or priority date, or 12 months from the date of the first substantive examination report if this is later. The end of the period can be extended by 2 months under Rule 108 without providing any reasons, and may be extended further if evidence is provided. This means that, if the end of the compliance period is getting closer than 3 months, a divisional can still be filed if an extension request is filed in time. 

Let's say we are exactly one month away from the end of the compliance period, which for the sake of this example is 30 December 2024. Can we still file a divisional application? The current date is 30 November 2024, which is a Saturday. We have unfortunately left this rather late, as we knew a while back that a divisional application would be needed. As a busy patent attorney, however, we are used to dealing with things at the last minute and we are sure that all will be fine because we can just file a request for a 2 month extension at the same time as filing the divisional application and all will be in order. 

Unfortunately, things will not be in order. A further quirk of the UK patent system is that dates on which things are deemed to be filed differ depending on what they are and whether the Office is open. For the purposes of most things the Office is closed at the weekend, meaning that anything filed gets a deemed date of the next working day (see here). This applies to everything apart from new applications that do not claim priority, which get the filing date of the day on which they are actually filed, regardless of whether the Office is open. 

The upshot of all this is that the divisional application we filed on 30 November (which did not claim priority) gets that date of filing but the extension request we filed at the same time gets a deemed filing date of 2 December. The result is that the divisional was filed out of time because on the date of filing it was within only 1 month of the end of the compliance period. The only way to rescue this would be to get a further discretionary extension to the compliance period to allow another purported divisional application to be filed within time, but we would have to adequately explain what happened and why this would be justified. 

This all sounds very implausible and not something that should happen in the real world. Any competent patent attorney with a reliable docketing system will be warned in good time beforehand about the upcoming deadline for filing any divisional and will not resort to the risky business of filing things on a Saturday evening. This is not, however, a theoretical example but actually happened. The full details can be found in a recent decision from the UK IPO in BL O/0308/25. To prevent further embarrassment to the patent attorney involved, I will not go into any more detail. It is, however, highly recommended reading for all UK patent attorneys, and especially for those involved in marking papers for the patent attorney examinations. 

Bionome v Clearwater - intention is not enough

When developing technology that may lead to patentable inventions, it is always a good idea to work out what to do with the resulting intellectual property. The question of who owns the IP is crucial to how and whether the technology can be developed further and commercialised. If the invention results from a joint venture, it is particularly important to figure this out beforehand by specifying in an agreement what each party is bringing to the venture, what they own themselves, and how any resulting IP from the joint venture will be dealt with. Even if such an agreement is reached, however, problems can still arise when the parties fall out before everything is set up commercially. The case of Bionome v Clearwater, which was decided last week at the High Court, is an example of this. 

Image: Grok's idea of a sugar-coated leaf.

The case did not start at the High Court but at the UK IPO, where the claimant Dr Clearwater filed in 2022 a request under sections 8 and 12 for him, or alternatively his company, to be added as joint applicant on Bionome's patent applications. The patent applications at that stage included an international application, published as WO 2021/191614 A1 and a UK application published as GB2598881A. Since then, further applications have been filed from the international application in several other countries. The issue from Dr Clearwater's perspective was that, while the applications had named him as joint inventor, the applicant was identified only as Bionome Holdings Limited, a company that was started by his ex-business partner Dennis McCarthy after they had worked together to develop the invention. 

At issue before the IPO was an agreement between Mr McCarthy (via his son) and Dr Clearwater that stated they agreed to assign their IP to an as-yet unspecified jointly-owned entity after certain steps were concluded. Their working relationship, however, broke down in January 2020 before the entity was created and before any patent applications were filed. It was only after this that Mr McCarthy arranged to file a UK patent application in March 2020, followed by an international application a year later. Before the IPO, Dr Clearwater argued that the agreement was only an intention to assign and not an actual assignment. The hearing officer agreed that it only indicated a direction of travel, did not define future actions and did not constitute a binding agreement regarding ownership of any IP. The hearing officer found in decision BL O/0410/24 in May this year that Dr Clearwater should therefore have been named as joint applicant, not just joint inventor, and ordered his name to be added as joint applicant on the GB and PCT applications. 

Bionome appealed the decision to the High Court, arguing that the hearing officer had got it wrong by misinterpreting section 7 and misconstruing the agreement. They argued that section 7(4), by stating "Except so far as the contrary is established", created a presumption that Bionome had a right to the inventions that could only be overcome by evidence from the claimant. Tom Mitcheson KC, acting as Deputy Judge of the High Court, rejected this argument, finding that the section did not create any sort of additional evidential hurdle or burden beyond the prima facie case that Dr Clearwater had already established, i.e. that he had jointly developed the invention with Mr McCarthy. On the construction of the agreement, Mr Mitcheson found that the hearing officer was correct in interpreting it as amounting only to an intent to transfer any IP and not to an actual assignment of IP. Bionome's appeal was therefore dismissed on both points. 

One lesson to be learned from this case is that agreements expressing only an intention do not amount to an actual assignment. If an actual assignment is intended, this needs to be explicitly expressed and preferably what is being assigned needs to be specified. Another lesson, which may be harder to follow, is not to get into joint ventures with someone who you do not trust, regardless of any agreement.