31 March 2021

RePipe Appeals, Following Failed Attempts to Amend

Site safetySome time ago – indeed, BC (i.e. before COVID) – I reported on a decision of Justice McKerracher in the case of Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956 (RePipe No 1).  RePipe is a plumbing business based in Western Australia that has developed a risk management software system called rerisk®, which is available as a service to other businesses that want to improve their workplace health and safety (WHS) processes.  The system comprises a server-based backend, and an app that can be installed on portable devices (i.e. smartphones or tablets) carried by workers on site.  In use, information and documentation pertinent to WHS compliance processes for particular jobs carried out by workers at specific locations are downloaded to the portable devices. The system provides prompts and checklists to ensure that workers comply with relevant procedures, generates alerts when problems or risks are identified, and enables information provided by the workers to be uploaded back to the server and/or communicated to other workers on site.

RePipe has filed patent applications in a number of jurisdictions.  In Australia, two innovation patents covering the rerisk® system were examined and found liable to be revoked by the Patent Office, on the basis that their claims were not directed to patent-eligible subject matter, i.e. a ‘manner of manufacture’ under the Australian law.  RePipe appealed to the Federal Court, which upheld the Patent Office decisions in RePipe No 1, issued on 22 November 2019.  The court found that the claimed inventions were, in substance, merely unpatentable business methods.  The claims were not saved by the fact that the inventions were necessarily implemented in software.  As Justice McKerracher explained (RePipe No 1 at [93]-[94]):

No specific application software has been claimed or even identified in any claim of the Patents. No computing programming logic or code is disclosed anywhere in the Patents. The substance of both inventions is a mere scheme that can be implemented using some unidentified software application to cause a server computer and smartphone to perform the steps identified in the claim. To implement the scheme, a reader must use his/her own skill and knowledge to write an appropriate software application. No such application is disclosed in the Patents.

…The language used by patent attorneys when drafting and amending claims cannot convert what is, in substance, an unpatentable business method or scheme into a patentable invention by merely asserting that the invention is in the field of computer technology or by using words in the claim or specification that refer to computer technology …. As a matter of substance, there is no meaningful technical content in the description in the body of the claims or specification.

This was not, however, the end of the story.  Following some further ado (discussed below), RePipe has filed an application for leave to appeal to a Full Bench of the Federal Court of Australia, on 2 March 2021.

30 March 2021

‘AI Inventor’ Update – DABUS Decision Goes to Federal Court

PrayerIn a fairly predictable development, Stephen Thaler has asked the Federal Court of Australia to review the Patent Office’s finding in February that a patent application cannot be validly filed in this country naming a machine as inventor.  The ‘Application for Judicial Review’ was filed on 9 March 2021 in the Victorian Division of the court, and has been assigned number VID108/2021.  Having been represented by Davies Collison Cave (DCC) in the patent application filed at the Patent Office, Thaler is represented in the Federal Court proceeding by Allens.  The reasons for this change are unclear – DCC incorporates a legal practice as well as its patent and trade marks attorney practice, and could presumably have handled the Federal Court application.  However, it is not unusual for applicants to switch representatives when moving from the Patent Office to the courts, either from necessity, or due to a perception that different firms have particular strengths in different areas of practice.

While the case may be casually characterised as an ‘appeal’ against the Patent Office decision, it is not technically an appeal under the Patents Act 1990.  The Act, and the Patents Regulations 1991, expressly set out the various decisions that are appealable to the Federal Court, and the lapsing of an application for failing to identify a valid inventor is not such a decision.  Instead, the application for review is made under the Administrative Decisions (Judicial Review) Act 1977 (ADJR Act), which provides more generally for review of administrative decisions by the Federal Court.

29 March 2021

Free, Streamlined Extensions of Time to End at IP Australia, but COVID Impact Can Still be Considered Under ‘Normal’ Procedures

First aidSince April last year, IP Australia has provided a streamlined process under which most deadlines associated with Australian patent, trade marks, and design rights – including evidence deadlines in opposition matters – could be extended by up to three months, at no charge, if the extension is required ‘due to the disruptive effects of the COVID-19 pandemic’.  That program ends on 31 March 2021.  From 1 April 2021, extensions of time will still be available for those impacted by the COVID-19 outbreak, but will be considered on a case-by-case basis.

Under the streamlined program, a party seeking an extension of time has been required only to tick a box in order to make a declaration that the impacts of COVID-19 had prevented a relevant act from being carried out within time.  This is much simpler (and cheaper) than the usual process, under which detailed evidence is required – typically in the form of a formal declaration or affidavit, along with any relevant accompanying exhibits – demonstrating exactly how events and/or circumstances have prevented the deadline from being met.  Additionally, official fees have been waived under the streamlined program.  These are typically based on the number of months of additional time requested, and can be quite substantial, e.g. up to A$1500 for a three-month extension of time to file evidence in a patent opposition.

While a blanket waiver of fees is unusual, it is clearly within the power of IP Australia to choose not to levy a fee for any service that it provides.  However, it is not within the agency’s power to waive the requirements of the Patents Act 1990 or the Patents Regulations 1991 (or corresponding legislation and regulations relating to other IP rights) with regard to the grounds upon which extensions of time may be legitimately granted.  In principle, therefore, streamlined extensions have generally been considered under existing provisions allowing for deadlines to be extended where ‘circumstances beyond the control’ of the responsible person(s) have prevented an action from being taken within the required time.  Ticking of the ‘COVID-19 box’ has thus been treated as prima facie evidence that the pandemic was, indeed, the cause of a failure to meet a deadline, with IP Australia warning that a false declaration could put the validity of the applicant’s IP rights at risk.

The initiative to make obtaining COVID-19 extensions simpler and cheaper was further complicated by the fact that in proceedings involving other parties, IP Australia is usually obliged to give those other parties an opportunity to comment on, and/or object to, the grant of an extension of time.  This obligation could not be suspended, and there were at least two patent matters in which objections were lodged.

With practices and procedures for requesting extensions of time returning to normal (or, at least, ‘COVID-normal’), it is to be expected that any party requiring an extension as a result of the impact of COVID-19 will bear a greater onus to demonstrate exactly why an extension is justified.

28 February 2021

Australian Patent Office Rejects Amazon Cloud Computing Invention as Patent-Ineligible

Cloud ComputingA delegate of the Commissioner of Patents has refused an application (no. 2018204629) by Amazon Technologies, Inc (Amazon) on the basis that it is not for a patent-eligible invention under Australia’s ‘manner of manufacture’ requirement: Amazon Technologies, Inc [2021] APO 7.  Amazon’s claimed invention relates to the execution of processing tasks within a cloud computing system, presumably such as its own Amazon Web Services (AWS) platform.  Specifically, it provides a mechanism for applications executing on ‘virtual machines’ within the cloud system to access additional resources as required during bursts of high demand.

This is yet another case in which a computer-implemented invention that appears at least superficially ‘technical’ has been found to be unpatentable because it is, as a matter of ‘substance’, in fact an ineligible business innovation, rather than a technical innovation.  There are many, many, words in Amazon’s main claims, and a lot of them seem highly technical, principally because they define the operation of a process within a technical system.  But does this mean that the inventive process is, itself, technical in nature?  The delegate determined that it is not.  He found that Amazon’s claims were directed to a scheme in which ‘business rules’ are applied for scheduling processing tasks, while the scheduler itself was performing only its ‘usual independent function’, with ‘no improved operation of the computing technology’.

In this case, I think that the delegate’s decision is a reasonable application of the law on patent-eligibility of computer-implemented inventions, as it has been interpreted by the Australian courts.  It is, however, a long decision, which could not fairly be described as light reading.  It is unfortunate that decision-making in this area of the law has become increasingly arcane and obtuse.  So rather than picking over the delegate’s decision, dissecting the lengthy patent claims, or reviewing the Federal Court authorities, I am instead going to do my best to explain Amazon’s invention and why it failed the patent-eligibility test in my own way, as plainly as I can.  And while I believe that the delegate’s decision is justified under the current law, I shall also explain why I think the law under-emphasises the technical context in which inventions such as Amazon’s are devised, and why a more nuanced approach might be more appropriate.

26 February 2021

DABUS Denied Down Under – Australian Patent Office Formally Rejects AI Inventor

Access DeniedBack in December 2020 I reported on the progress of an Australian patent application naming an ‘artificial intelligence’ going by the name DABUS (‘Device for the Autonomous Bootstrapping of Unified Sentience’) as inventor.  The application – no. 2019363177 – was derived from an international application filed under the Patent Cooperation Treaty (PCT), and names Dr Stephen Thaler, the developer of DABUS, as applicant.  At that time, the Australian Patent Office had raised an objection to the naming of a machine as inventor, and sought further submissions from the applicant on this issue.  I anticipated that the case would be referred to a hearing officer to determine the matter by way of a formal decision, and predicted that Dr Thaler’s rather unconventional assertions that an AI can be an inventor, and that he is entitled to receive any resulting patents by virtue of ownership of the AI, were unlikely to be accepted by the Patent Office.

That has all now come to pass, with a decision of a delegate of the Commission of Patents issued on 9 February 2021: Stephen L. Thaler [2021] APO 5.  In accordance with the plan language of the Australian Patents Act, and established legal principles, the delegate has determined that a patent can only be granted to a person, that a machine is not a person, and that there is no mechanism whereby the right to apply for a patent on an invention devised by a machine can be legally transferred to any person.

In short, a patent application naming a non-human inventor cannot be validly filed, regardless of who is named as the applicant.  A corollary of this (although not addressed in the decision) is that a patent on an invention devised by a machine can never be validly granted, even if the true nature of the inventor is concealed from the Patent Office, because there is simply no mechanism for any named applicant to derive a legal right to apply.  In practice, applicants are required to provide the Patent Office with a declaration of entitlement, and in the case of a machine invention this declaration would necessarily be invalid and/or false.


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