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

A 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.

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Tags: Australia, Computer programs, Patentable subject matter

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

Back 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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Tags: Artificial intelligence, Australia, DABUS, Inventorship, Patent law

Why Do Applicants File Divisional Applications, and Are They as Important as ‘Original’ Applications?

In its 2020 IP Report, IP Australia introduced a novel measure of patent application filing intensity to identify top applicants – namely, the number of ‘original’ applications filed, excluding any divisional applications.  For the uninitiated, divisional applications are patent applications that are based on subject matter that is ‘divided out’ from previously filed applications (typically termed ‘parent’ applications), as distinct from ‘original’ applications that comprise new content filed for the very first time.  I took issue with the ‘original applications’ metric, on the basis that I did not consider there to be any coherent or logical basis for simply ignoring divisional applications when comparing applicant activity.  My views have not changed significantly over the intervening months.

It is certainly true that not all divisional applications are created equal.  At one end of the spectrum there are divisionals filed primarily as a way to buy additional examination time, with the parent application being allowed to lapse.  To distinguish these kinds of divisionals we can call them ‘continued examination’ applications. At the other extreme, there are divisional applications that are filed for the primary purpose for which they exist – to enable an applicant to obtain a patent for a distinct (second or subsequent) invention disclosed, but not claimed, in the original application – where the original application typically goes on to be granted, while the divisional proceeds independently.

Within the latter category of divisionals, there are also degrees of ‘independence’.  Sometimes the invention claimed in a divisional application is closely related to that of the original application.  For example, it might be substantially the same invention, where the applicant is seeking a different (e.g. broader) scope of protection.  In many cases, however, the invention claimed in a divisional application is distinct from the original invention.  There are numerous reasons why an applicant may end up disclosing multiple inventions in a single initial filing, either intentionally or unintentionally, and a discussion of all of those reasons is beyond the scope of this article.  But regardless of how it comes about, such an initial filing is best viewed as equivalent to a ‘bunch’ of applications, all of which are just as entitled to be counted as if they had been filed separately on the same day.

It is difficult to identify the purpose of each divisional application, other than by drilling down and comparing what is actually claimed against the parent application from which it has been divided.  However, some information can be gleaned from the eventual fate of the parent application.  For example, if the parent lapses without ever being accepted, it might be inferred that the divisional was filed for the purpose of continuing examination of the claims.  Conversely, if the parent application is accepted, then it is more likely that the divisional application was filed to pursue claims to a further invention, or to an alternative scope of the original invention.

To get an initial idea of the way in which applicants use divisional applications in Australia, I have analysed the outcomes for parent applications since 2002.  Over this period, divisional applications have become considerably more ‘popular’, with the number of divisional filings increasing more than threefold, compared with an overall increase in standard application filings of just 30%.  Most of this growth occurred between 2010 and 2016, with a slight decline in divisional applications from 2018.  Over time, around 70% of parent applications have been accepted, indicating that the majority of divisionals are not filed merely for the purpose of continuing examination of the original application.

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Tags: Australia, Divisional applications, Patent analytics