Patenting Software in Australia: Australian Patent Office Says No in July 2017

Patenting Software in Australia: Australian Patent Office Says No in July 2017
Katherine Rock

In this post, we look at the July 2017 Australian Patent Office decisions.  Of the seven decisions published to date (issued to 24 July 2017), four (4) relate to computer software and manner of manufacture, and on all four the Delegate has found the subject matter unpatentable:

  • Todd Martin [2017] APO 33 (7 July 2017)
  • Rokt Pte Ltd [2017] APO 34 (11 July 2017)
  • Discovery Life Limited [2017] APO 36 (18 July 2017)
  • Bio-Rad Laboratories, Inc. [2017] APO 38 (24 July 2017)

Todd Martin (7 July 2017)

Is a system and method for tracking usage of athletic equipment of an athlete in a computer web-based training log server patent eligible?

This case involves an innovation patent which was undergoing examination, with four examination reports having been issued – with the outstanding issue being that the claims were not directed to a “manner of manufacture” (that is, were not patent eligible subject matter).

Independent claim 1 was directed toward a system respectively, including a computer web-based training log server, a processor and a GPS-enabled mobile device, where training distance and time were recorded and a warning issued in relation to maximum usage.  Independent method claim 5 was directed toward largely similar subject matter.

The Delegate looked to NRDC, Myriad and RPL Central to justify a case-by-case analysis as to whether an invention satisfies the requirements for a “manner of manufacture”, including having regard for the technicality of an invention.  Indeed, the Delegate cited the four step test outlined in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application[2006] EWCA Civ 1371 (‘Aerotel‘), as cited in Research Affiliates LLC v Commissioner of Patents[2014] FCAFC 150, for determining whether the invention has a “technical effect”, namely at [40]:

“(1) properly construe the claim; (2) identify the actual contribution;  (3) ask whether it falls solely within the excluded subject matter; (4) check whether the actual or alleged contribution is actually technical in nature.”

Whilst the Delegate acknowledged that the claims were to a GPS-enabled device and server, the Delegate stated these elements were simply used in their normal, standard way.  Any “technical effect” arising from the combination of acquiring and tracking training data and issuing a warning was, according to the decision, confined to the “nature of the data that is acquired and tracked, and the nature and timing of the information that is output or issued at the appropriate point” (at [44]) .

Thus the claims were held to lack a technical contribution in respect of the devices – and were consequently not a manner of manufacture; “it cannot be fairly said that the overall claimed arrangement solves a technical problem within or outside the computer, or results in an improvement in the functioning of a computer or computer system” (at [48]).

Australian Patent Offices Says: No

Rokt Pte Ltd (11 July 2017)

Is a digital advertising system and method patent eligible?

This decision relates to application AU2013201494 and a previous hearing, Rokt Pte Ltd [2016] APO 66.  In particular, the Delegate had found that the claims of the application were not directed toward a manner of manufacture – and invited amendments.  This decision relates to those amendments.

The amended independent claims, 1 and 15, were directed toward a method and system, respectively, for linking a computer user to an advertising message by way of an intermediate engagement offer.

The amendments sought to clarify that the linkage of the user to an advertisement was made via an intermediary engagement offer which was determined by evaluating engagement data to determine if an engagement trigger has occurred – and if multiple offers are available determining which one to present – as well as collecting user data for use in future engagement offer decision selections.

On the basis of the amendments, the Delegate considered the new substance of the invention to additionally include selecting between engagement offers, and collecting data for future engagement offer selections.

Again, the Delegate distances the alleged substance of the invention from “the way the computer is utilised”, stating at [31]:

I do not consider the features identified above add anything more than further specifics to the advertising methodology. Ranking based on non-technical metrics, and collecting further data to use in the future to select subsequent advertisements, are contributions that are simply strategic innovations in the field of advertising for improving customer engagement with ads that amount to a mere scheme.

Accordingly, the Delegate found that improvements to an evaluation scheme and not the computer systems themselves, were not patentable.

Australian Patent Offices Says: No

Bio-Rad Laboratories, Inc. (24 July 2017)

Is a system and method for producing statistically valid assay means and ranges for quality control materials patent eligible?

This case involves divisional application AU2016200387, which was filed in respect of a national phase entry application (AU2012236746) of a corresponding PCT application – which failed to gain acceptance within 12 months due to an outstanding manner of manufacture objection.

The present divisional also had outstanding manner of manufacture objections.  Three independent claims 1, 13 and 15, related to a method, system and assay mean and range assignment system – for establishing a statistically valid assay mean and range.

The Delegate distanced the matters for consideration in this case from RPL and Research Affiliates, in his view due the the latter being directed to schemes.

Rather, the decision focused on Grant’s interpretation of NRDC – and whether a physical effect was present.  In particular, when examining the specification, the Delegate did note at [35] that the breadth of the claims in terms of the variability being estimated from historical results in full or in part – does not necessarily produce the stated physical effect in all instances, and moreover may raise support issues.

Nevertheless, the Delegate has made provision for the applicant to submit amendments in order to attempt to overcome the objections – therefore, watch this space!

Australian Patent Offices Says: No

Discovery Life Limited (18 July 2017)

Is a method of managing a life insurance policy with a related medical scheme patent eligible?

The application at the centre of this decision, AU2016203283, is a fourth order divisional of an application (it’s great great grandparent) with an earliest priority date of 16 April 2004.  The outstanding objections included that the subject matter of the claims was not a manner of manufacture (and inventive step – see the decision for more information on this!).

The application includes one independent claim, relating to managing a life insurance policy based upon linking – using an information processing system – an individual’s life insurance policy to a medical policy and allocating a portion of life insurance premiums to a payback fund based upon criteria associated with the individual – payable after a predetermined amount of time.

The Delegate in this case dismissed the applicant’s submissions that integration of two computer systems relating to life insurance and medical insurance policies resulted in more than a generic computer.  Rather, the decision states that when read as a whole, the specification failed to provide any more than a generic description of the computer integration – and thus the claims are directed to “plainly a business method, a mere scheme” [27] and patent ineligible.

Australian Patent Offices Says: No

What does this mean?

On the face of it, the decision issued in July by the Australian Patent Office may be discouraging as the apparent rejections relate to a broad range of fields of innovation – from collection and analysis of data, targeting advertising, statistical optimisation for assay analysis, and insurance policy management.

However, it does appear that the Patent Office is operating on a case by case basis, and in addition looking to authorities which ostensibly require a demonstrable technical effect (see, eg, Aerotel), a concrete, physical effect (see, eg, Grant), and/or distinctions from a generic computer system(s).  Therefore, we would advise that when seeking to apply for patent protection in Australia, you consider these authorities and seek a professional opinion – so feel free to contact us with any questions.

Notwithstanding the above, given the contention around the issue of patent eligibility of software, and the fact that the interpretation of the Patents Act may be subject to change as more cases are brought before the courts, we could well see a relaxing (or tightening) of these requirements in years to come.

First published: 3 August 2017


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