30 November 2022

High Court’s Aristocrat Debacle Leaves Patent Office Practice Unchanged

Batter up Back in August, the High Court of Australia handed down a ‘decision’ on the patent-eligibility, under the ‘manner of manufacture’ test in Australian law, of claims directed to computer-implemented electronic gaming machine (EGM) technology developed by Aristocrat Technologies Australia Pty Ltd: Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29.  Unfortunately, the Court was evenly split, 3:3, on whether or not Aristocrat’s claims were patentable, resulting in the adverse decision of the Full Federal Court being affirmed on a technicality, despite all six High Court judges having criticised the approach taken by the lower court.  (See High Court’s Failure Exposes the Festering Eligibility Sore in Australia’s Patent Laws for my analysis of the case.)  This left many people scratching their heads trying to work out what effect, if any, the decisions of either the High Court, or the Full Federal Court, might have on the treatment of computer-implemented inventions by lower courts and – more immediately – the Patent Office.

While we are still waiting for a decision in which a single judge of the Federal Court is required to consider whether she or he is bound by anything said by the higher courts in the Aristocrat case, the reaction from IP Australia – following an initial statement that ‘the Commissioner will carefully review the decision and consider its implications’ – has been… silence.  There have been no further statements or other communications.  There have been no updates to the Patent Manual of Practice and Procedure (a.k.a. the Examiners’ Manual).  All indications are that the High Court’s decision has changed nothing.

As further evidence of this, there have now been three hearing decisions on patentable subject matter issued by the Patent Office since the High Court handed down its opinions in Aristocrat.  In all three cases, the inventions described and claimed in the patent applications at issue were struck down as not being patent-eligible, for reasons that would have applied equally prior to the High Court decision.

17 November 2022

Dear Twitter – It’s Not Me, It’s You!

Vomiting blue bird that is definitely not the Twitter logo I joined Twitter in June 2010.  I did not really know what Twitter was, or how it worked, but there was a lot of ‘buzz’ around it, and I wondered if it might be a useful channel to share and promote the blog that I had just created.  That turned out to be a good call, especially when the Apple v Samsung patent litigation kicked off in Australia about a year later.  Journalists were among the most active and enthusiastic early users of Twitter, and I would not be surprised if they are among the last to leave if and when the lights finally go out.  It was easy to become one of the most visible IP professionals talking about Apple and Samsung on Twitter.  Journalists contacted me for comments on the case, and quoted me online and in print which, in turn, led to appearances on Australian radio, and even to a couple of international online video interviews.  Monthly visitors to Patentology doubled between July and August 2011, and by mid-2013 the blog was regularly welcoming over 5,000 unique users each month.  My level of activity, and the size of my readership, have scaled back somewhat since those heady days.  At the time, however, I was still building a client base, and all of that media exposure was the kind of publicity that money simply could not buy.

So I credit Twitter with helping me to make a name for myself in the Australian IP profession.  But it was not only about self-promotion.  Back then, I also found Twitter to be home to a friendly and collegiate community.  I connected with other patent attorneys, lawyers, bloggers, technology enthusiasts, and people with all sorts of different interests.  It was fun, and it was (mostly) fairly pleasant.  It was also a bit ‘rough and ready’.  As a recent opinion piece reminded me, in those days Twitter did not natively support hash-tags, @-mentions or retweets – these all started out as conventions devised by users, long before they were implemented as features of the platform.  Links used up as many characters as were in the web address, making URL shortening services such as bit.ly essential tools.  And tweets were limited to 140 characters, before being doubled to the current 280 characters in 2017.  It was all quite arcane and mysterious to outsiders, which no doubt contributed to a general feeling of camaraderie among we self-anointed Twitter cognoscenti!

These days Twitter is a much easier, but much less pleasant, place to be.  You might say that it has become more ‘user-friendly’ while simultaneously becoming much less friendly to its users.  And, to be clear, this has nothing – or not much – to do with the recent takeover of the platform by Elon Musk.  As another recent opinion piece put it, ‘…long before Musk’s ownership, [Twitter] was frequently an unpleasant place to be.  People on the right are targeted by the left, people on the left by the right.  Women and minorities receive more hate than most.’  Prior to the acquisition, Musk sought to smooth the waters by promising not to let Twitter become a ‘free-for-all hellscape’.  But, let’s be honest, this sets a pretty low bar for success.  If, or when, the day comes that Twitter’s best selling point is that it’s not an actual hellscape, then I imagine our choice of social media platforms will be the least of our troubles as a civilisation!

I recently requested an archive of my Twitter data which made it easy for me to go back and review my tweeting history.  Clicking through the links on some of my earlier tweets I discovered that many of the people with whom I engaged back then seem to have abandoned the platform.  Many have not tweeted for years, while a few have even deleted their accounts.  Some of the journalists who are still there (because they have to be, in order to do their jobs) have deleted many years’ worth of old tweets, perhaps to avoid the possibility of being embarrassed or compromised by something that their less mature selves may have written on a less mature, and more free-spirited, Twitter.

But the final nail in Twitter’s coffin, for me, is simply this.  A couple of weeks ago I wrote about starting my new PhD.  Although I have 2,480 followers on Twitter, a tweet linking to that article received only 177 impressions, four ‘likes’ and one direct reply.  On LinkedIn, where I have 1,052 followers, a post linking to the article has so far received 5,823 impressions, 79 reactions (i.e. ‘likes’ and similar), and six comments.  The most common roles of people reached by the post include patent attorneys, lawyers, academics, patent examiners and CEOs.  Many of these are not the people I would have most wanted to reach when I was seeking exposure to potential clients as a patent attorney, but they are exactly the people I am hoping will be interested in following my latest professional endeavours.

I am not going to petulantly quit Twitter and delete my account – unlike Stephen Fry, who last week tweeted an image of Scrabble letters spelling out ‘goodbye’, and abandoned his 12.5 million followers!  I am just going to ‘quiet quit’, and stop using my account.  It can sit there for posterity, but it is doing nothing for me professionally, and I do not need the aggro that comes with too much personal engagement on the platform.  You will see that the box in the sidebar to the right that showed my latest tweets is gone, and has been replaced with one displaying my recent activity on LinkedIn.  And if you wish, you can come and follow me or connect on LinkedIn.  I will look forward to seeing you there!

15 November 2022

DABUS Down – High Court Dashes Hopes of ‘AI Inventor’ Advocates

Gavels have never been used in Australian courtsOn Friday 11 November 2022, three judges of the High Court of Australia (Gordon, Edelman and Gleeson JJ) refused – with costs – Stephen Thaler’s application for special leave to appeal a decision of the Full Court of the Federal Court of Australia determining that the (alleged) ‘AI inventor’ DABUS cannot be named as an inventor for the purposes of applying for a patent in Australia.  This brings to an end the efforts of Dr Thaler – and his ‘sponsor’, Artificial Inventor Project leader Professor Ryan Abbott – to achieve recognition for machine inventors under Australian law via the courts.  I have long argued that even if machines are capable of autonomous invention without human involvement (which remains, for the present, a dubious claim), it is far from obvious that granting patents for machine-generated inventions is economically or socially desirable.  The High Court’s refusal to weigh-in at this time places the issue back in the hands of the legislature to determine whether any change to the law is required.  However, any reforms should be preceded by a proper enquiry into the pros and cons, including consultation with experts, interested stakeholders, and the wider public.

To be fair, the High Court did not appear to completely shut the door on patents being granted for machine-generated inventions under the existing law.  The judges who heard Thaler’s application seemed open to the possibility that a human inventor might be identified in such cases, or perhaps that there might be no inventor but that someone might nonetheless be entitled to obtain a patent on the invention.  However, this particular case provides the Court with no factual basis to consider such alternative options, and the judges therefore did not consider it a suitable case in which to grant special leave to appeal.

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The Patentology Blog by Dr Mark A Summerfield is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 3.0 Australia License.