Opposition – ground raised by Patent Office – patentable subject matter – whether computer-implemented information system and process a ‘manner of manufacture’
In a decision on which we would like to provide extensive commentary – but cannot because of our own involvement in the case – Hearing Officer Sushil Aggarwal has found the following claim unpatentable on the ground that it does not define a ‘manner of manufacture’, i.e. is not statutory subject matter:1. A method of gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard, including the steps of:
- a computer retrieving via the Internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
- the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
- an assessment server presenting the automatically-generated questions via the Internet to a computer of an individual requiring assessment; and
- receiving from the individual via said individual’s computer a series of responses to the automatically generated questions, the responses including evidence of the individual’s skills, knowledge and/or experience in relation to each of the elements of competency and performance criteria,
- wherein at least one said response includes the individual specifying one or more files stored on the individual’s computer, which are transferred to the assessment server.
The primary reasoning in the decision is to be found at paragraph [55] of the decision:
The claimed invention defines a method for gathering information where the data retrieval, processing and storage of information appear to have no physical effect other than that would arise in the computer with standard software in conventional use. Furthermore, there is no substantial effect or transformation in generating the questions by concatenating text matters. While the internet and the computer facilitate the operation of the claimed method by retrieving, generating and conveying information, they are not central to the purpose of the claimed invention… [which] simply monopolises a scheme where the internet and the computer are used for mere convenience for operating the scheme.
For further discussion of the case, we refer the interested reader to A business method patent (not yet) on the ipwars blog.
Disclosure/Disclaimer
The author, Dr Mark Summerfield, is employed by the patent attorney firm within Watermark Intellectual Asset Management, and in this capacity represents RPL Central Pty Ltd in this matter. This article is based wholly upon the content of the published decision of the Australian Patent Office. Any opinions expressed in this article are independent and solely those of the author. (Also see our 'About' page.)Before You Go…
Thank you for reading this article to the end – I hope you enjoyed it, and found it useful. Almost every article I post here takes a few hours of my time to research and write, and I have never felt the need to ask for anything in return.
But now – for the first, and perhaps only, time – I am asking for a favour. If you are a patent attorney, examiner, or other professional who is experienced in reading and interpreting patent claims, I could really use your help with my PhD research. My project involves applying artificial intelligence to analyse patent claim scope systematically, with the goal of better understanding how different legal and regulatory choices influence the boundaries of patent protection. But I need data to train my models, and that is where you can potentially assist me. If every qualified person who reads this request could spare just a couple of hours over the next few weeks, I could gather all the data I need.
The task itself is straightforward and web-based – I am asking participants to compare pairs of patent claims and evaluate their relative scope, using an online application that I have designed and implemented over the past few months. No special knowledge is required beyond the ability to read and understand patent claims in technical fields with which you are familiar. You might even find it to be fun!
There is more information on the project website, at claimscopeproject.net. In particular, you can read:
- a detailed description of the study, its goals and benefits; and
- instructions for the use of the online claim comparison application.
Thank you for considering this request!
Mark Summerfield
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