Had the Full Court been clearer, perhaps IP Australia would have been in a better position to establish some form of coherent and objective approach to examination. As it is, however, the ‘guidance’, which is principally to be found in Section 126.96.36.199 of the Manual, is little more than a laundry list of ‘principles’ to be considered when examining computer-implemented subject matter. I do not think that this is very helpful, either for applicants and their representatives, or for the patent examiners who are supposed to follow the published practice.
The guidelines open with:
Under Australian law, there are no specific exclusions for software or methods that are implemented as computer software or a related product. However, they are only patentable if what is claimed “as a matter of substance” meets the requirements for a manner of manufacture and in particular is not a mere scheme, abstract idea or mere information.
This is an accurate statement of the approach taken by the courts in both the Research Affiliates (Research Affiliates LLC v Commissioner of Patents  FCAFC 150) and RPL Central cases. In neither case, however, did the court provide clear guidance as to how to determine, in any given case, the ‘substance’ of the invention. This is extremely problematic, and can result in essentially arbitrary and subjective decision-making. As the first point in the laundry list of principles correctly states:
Each case must be considered on its merits.
The next point goes on to explain – again, quite reasonably – that an ineligible invention cannot be made eligible for a patent merely because some clever patent attorney might have dressed up the claims to look superficially like the invention is not a mere scheme, or some other class of excluded subject matter:
In considering whether the substance of the claimed invention is a scheme, abstract idea or mere information, it is necessary to go beyond the form of words used. The alleged invention is to be understood in the context of the specification as a whole and the relevant common general knowledge. For example, the substance of an alleged invention may be a scheme even if the claims literally define a physical product, e.g. a system or computer when programmed to carry out a scheme.
From here, however, the guidance becomes decidedly more difficult to apply consistently and objectively.
Stalemate!A typical exchange with an examiner in recent times might go something like this.
Applicant (following a couple of pages explaining the substance of the invention, how it works, how it interacts with a pre-existing system to provide some improvement or new functionality, and how this relates to the disclosure in the application and the claim language): ‘The invention thus makes a technical improvement to existing computer systems in <field of the invention>, providing new functionality not previously available, and solving <problem in the field identified in the patent specification>. As a matter of substance it is not a mere scheme or business method, and the inventor’s contribution resides at least partly in the manner in which the invention has specifically been implemented to function within the prior art systems that were not previously able to provide <the new features>.
Examiner: Your submissions have been considered, however I am maintaining the objection that the claims are not for a manner of manufacture. As a matter of substance, the claimed invention is simply a method <of doing something defined in generic terms that completely ignores the detail provided in the specification and claims>, which is nothing more than an unpatentable business method/mere scheme/abstract idea [delete those which do not apply].
This is what is known as an impasse, or a stalemate. It comes down to a game of ‘he said, she said’ which is completely consistent with the new guidelines. Consider the following list of ‘considerations’, extracted from the Research Affiliates and RPL Central decisions, which the Manual states ‘may be relevant to whether a computer related invention is in substance a manner of manufacture’:
- whether the contribution of the claimed invention is technical in nature.
- whether the invention solves a technical problem within the computer or outside the computer or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
- whether the claimed method merely requires generic computer implementation.
- whether the computer is merely an intermediary or tool for performing the method while adding nothing of substance to the idea.
- whether the ingenuity in the invention is in a physical phenomenon in which an artificial effect can be observed rather than in the scheme itself.
- whether the alleged invention lies in the way the method or scheme is carried out in a computer.
- whether the alleged invention lies in more than the generation, presentation or arrangement of intellectual information.
How to know who is right? Well, each case must be considered on its merits, so the guidelines cannot be applied hypothetically. We will have to look at a real example.
So, Let’s Apply the Guidelines!I once wrote an analysis of one of the key claims of the famous CSIRO ‘Wi-Fi’ patent. I thought it would be interesting to see how the new guidelines might be applied to the claim, which recites:
A method for transmitting data in a confined multipath transmission environment of radio frequencies, said data being provided by an input data channel coupled to transmission signal processing means in turn coupled to antenna means, said method comprising the steps of:
- applying data reliability enhancement to said data;
- interleaving, by means for interleaving, blocks of said enhanced data;
- modulating said data, by modulation means of said transmission signal processing means, into a plurality of sub-channels comprised of a sequence of data symbols such that the period of a sub-channel symbol is longer than a predetermined period representative of significant ones of non-direct transmission paths; and
- transmitting, by said antenna means, said sub-channel symbols.
Hopefully, we can all agree that the CSIRO invention comprises patent-eligible subject matter. The patent survived numerous concerted attacks in the US, and ultimately resulted in settlements to CSIRO totalling many hundreds of millions of dollars. However, I will now show how the guidelines on computer-implemented invention can be applied to argue that the above claim is not for a patentable manner of manufacture!
A Matter of Substance, Not FormThe first thing we need to deal with is that, on its face, the claim is directed to a technical method of encoding and transmitting information within a particular physical environment. But, as the guidelines tell us, the language of the claim is not determinative. We need to look to the substance of the invention, bearing in mind that ‘the limitation of the claims to other technological environments may not alter the fact that what is claimed is a scheme or abstract idea.’ There is clearly nothing novel here in the transmitter or receiver, or in the ‘multipath transmission environment’, which is a well-known pre-existing property of many spaces. So the substance of the invention cannot lie in these aspects of the technological environment.
That really only leaves the first three steps in the method to provide the necessary ‘substance’. But if we look at how broadly each of those steps is defined, we surely have to wonder whether they are not merely the clever description of some unpatentable abstract idea.
The ‘Substance’ of the Wi-Fi InventionFirstly, ‘applying data reliability enhancement’ could be as simple as adding a checksum to the data. Indeed, it could be even more basic, such as repeating the information in a different form. This does not even require a computer – when you spell out a word to someone over the phone by distinguishing ‘”N” for “Nellie”’ from ‘”M” for “Margaret”’, you are ‘applying data reliability enhancement’ to your information. No invention there, then.
OK, what about ‘interleaving … blocks of said enhanced data’. Well, interleaving is (and was, at the relevant time) a very well-known technique for improving reliability. Transmission errors commonly occur in bursts, so spreading the enhanced information out decreases the chance that the information will be irretrievably destroyed by a burst of noise. Again, no computer is required – this is equivalent to saying ‘”M”, “A”, “N”, that’s “Margaret”, “Apple”, “Nellie”’ instead of ‘“M” for “Margaret”, “A” for “Apple”, “N” for “Nellie”’. A burst of static on the line could wipe out the entire first letter in the second example, whereas the fact that the first letter is ‘M’ still gets through, via the word ‘Margaret’, in the first version.
Finally, we have ‘modulating said data … to a plurality of sub-channels comprised of a sequence of data symbols such that the period of a sub-channel symbol is longer than a predetermined period representative of significant ones of non-direct transmission paths.’ Imagine your phone line has an echo. If you speak too quickly, the person at the other end will find it hard to understand because the echoes from previous ‘symbols’ (i.e. words) will be reverberating over the top of subsequent signals. We can mitigate this problem just by sending each symbol separately, and by speaking each one more slowly, which is all that this step essentially states.
Of course, the claim is not really intended to cover speaking down a noisy, echoing, phone line. But even if we read it in the context of the technology described in the specification, we still need to keep in mind, as the guidelines tell us, that putting a ‘scheme into a computer is not patentable unless there is an invention in the way the computer carries out the scheme or method.’
Well, there’s no invention in adding checksums or other redundancy into data – it is an absolutely standard operation in data storage and transmission.
Interleaving involves nothing more than shifting data around in memory, without altering its content in any way, which is, again, a completely standard operation for any computer.
And the sub-channel modulation step could encompass a range of processes, depending upon the nature of the sub-channels. As described in the patent specification, separate frequency channels are used, which involves computing a discrete Fourier transform of the data, which is a standard signal processing operation for which off-the-shelf code packages have been available for decades. (The Cooley-Tukey algorithm for computing a ‘fast Fourier transform’ was published in 1965, but turned out to be the rediscovery of an algorithm known to Carl Friedrich Gauss in 1805, who of course did not have, or need, a computer to implement it!)
Wi-Fi – Not Patentable Subject Matter!I conclude that the substance of the claimed invention resides wholly in the abstract idea of adding data redundancy, shifting the data around in a memory, and computing a transform of the data which, at best, ‘merely requires generic computer implementation’ and in which ‘the computer is merely an intermediary or tool for performing the method while adding nothing of substance to the idea’ (quoting directly from the guidelines). It is therefore not a manner of manufacture as that concept has been explained by the Full Court in Research Affiliates and RPL Central.
Conclusion – Why the High Court Should Weigh-InOf course, I do not believe a word of what I just wrote about the Wi-Fi claim. I do, however, believe every word of what I have written in support of various clients’ claims over the past few months and yet, in the vast majority of cases, those submissions have been knocked back, typically with a few sentences not much more detailed than my final conclusion above.
And if the guidelines enable a plausible argument to be constructed to the effect that an obviously patent-eligible invention is not, in fact, a manner of manufacture, what hope is there of seeing any objectivity or consistency in fields of endeavour that are not as well-established as wireless data communications?
As matters stand, there is no argument in favour of patent-eligibility, no matter how detailed, that cannot be rebutted on the basis of a difference of opinion about where the elusive ‘substance’ of the invention resides, and suitable cherry-picking from the long list of ‘principles’ set out in the Manual.
To be clear, I do not blame the examiners for any of this. They are doing their jobs by following the guidance of the Manual and their supervisors. It is the courts that have left us with such nebulous ‘principles’, and IP Australia that led us all to this point by implementing what most observers (myself included) believe was a deliberate strategy to restrict patent-eligibility of computer-implemented inventions. It was this strategy that ultimately resulted in the appeals by Research Affiliates and RPL Central, and IP Australia’s prosecution of that litigation which resulted in the Full Court decisions with which we are currently living.
I can only hope that the High Court sees fit to take on the RPL Central case. Win or lose (though of course I would much prefer to win), it is the best prospect for there to be any further clarification of the law in relation to computer-implemented inventions for the foreseeable future. While people in the biotechnology sector may initially have been dismayed by last year’s High Court decision declaring isolated genes unpatentable, in the D’Arcy v Myriad case, at least they were consulted on the examination guidelines subsequently proposed by IP Australia. I think it will take another High Court ruling for there to be a similar consultation on computer-implemented inventions.