The Aristocrat Effect – Subject Matter Objections at the Australian Patent Office

On 16 September 2025, the Full Federal Court of Australia handed down its decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131, holding Aristocrat’s claims to computer-implemented electronic gaming machine (EGM) technology to be patent-eligible subject matter, i.e. a ‘manner of manufacture’ (MoM) under Australian law.  On 14 October 2025, IP Australia made initial amendments to its examination guidelines (most notably to section 5.6.8.1 General Principles – Assessing Manner of Manufacture and 5.6.8.6 Computer Implemented Inventions) in view of the Full Court’s decision.  Meanwhile, however, the Commissioner of Patents was applying for special leave to appeal the Full Court’s decision to the High Court of Australia.  On 5 February 2026, the High Court denied the Commissioner’s application, stating that ‘there is insufficient reason to doubt the correctness of the decision of the Full Court’ and marking the first time since 1991 that a dispute with the Commissioner over patentability of a computer implemented invention (CII) concluded with a victory for the applicant/patentee.

Since February, the examination guidelines have been twice updated – on 16 March 2026 and 3 July 2026 – firstly in view of the High Court’s refusal of special leave, and further in view feedback from stakeholders.  It is therefore reasonable, and timely, to ask: what difference, if any, have the Full Court and High Court decisions and the updates to the examination manual actually made to outcomes in the examination of CIIs in Australia?

In this short update (it is early days yet) I report preliminary and tentative evidence that outcomes are improving in examination of applications directed to CIIs.  Objections based on subject matter eligibility, i.e. MoM, have declined in every full quarter since Q3 2025, when the Full Court issued its decision in Aristocrat.  In Q2 2026, MoM objections were 40% below their peak in Q4 2024.  This is an astonishing turnaround in just 18 months, and is strong evidence that CIIs are receiving substantially more favourable treatment at the Australian Patent Office in the wake of the Aristocrat decisions.

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Tags: Computer-implemented inventions, Examination, Patent Office, Patentable subject matter

High Court Backs Aristocrat on Software Patentability – It’s Time for IP Australia to Follow Suit

The High Court of Australia has denied an application by the Commissioner of Patents for special leave to appeal a decision of the Full Federal Court in which claims to a computer-implemented invention (CII), in the form of an electronic gaming machine (EGM), were found to be patent-eligible in Australia.  This brings to an end the long-running dispute over patentability of Aristocrat’s claims, and marks the first time since 1991 (IBM v Commissioner of Patents [1991] FCA 625) that any such dispute with the Commissioner over claims to a CII has concluded with a victory to the applicant/patentee. 

The significance of this outcome cannot be overstated.  In recent years we have seen many cases conclude with claims being found ineligible – i.e. not for a ‘manner of manufacture’ under Australian law – namely Grant v Commissioner of Patents [2006] FCAFC 120, Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177, Watson v Commissioner of Patents [2019] FCA 1015 (leave to appeal refused in Watson v Commissioner of Patents [2020] FCAFC 86), Repipe v Commissioner of Patents [2019] FCA 1956, and Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86.  That is a lot of cases telling us what is not patent-eligible, with absolutely no guidance from the courts on where the boundary might lie on the positive side of patent-eligibility.  Finally, we have a decision of the Full Federal Court that sets out a reasonably clear and concise test which is then applied to eligible claims.  The High Court, in denying the Commissioner’s application for special leave to appeal, stated that the ‘Full Court applied established principles concerning the assessment of manner of manufacture and reached a unanimous and clear conclusion as to characterisation’: Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2026] HCADisp 15, at [2].

Following a rather convoluted passage through the Federal Court, the Full Federal Court and the High Court, back to the primary judge and then to the (differently constituted) Full Court, the final word on patent-eligibility of Aristocrat’s claims is Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131.  In this decision, the Full Court effectively overruled the reasons (though not the orders) of the earlier Full Court, and adopted the affirmative reasons of three High Court judges in the split decision Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (see High Court’s Failure Exposes the Festering Eligibility Sore in Australia’s Patent Laws for more).  Somewhat unusually, this also involved, in a sense, ‘overruling’ the negative reasons of the other High Court judges, in a rare instance of three judges of an inferior court asserting precedence over three judges of a superior court (albeit with the support of three further judges of that superior court).  But that’s just a function of how weird this case became!

In what follows, I will briefly summarise how we got here, where the law stands in view of the Full Court’s 2025 decision, and the High Court’s reasons for refusing special leave to appeal.  Finally, I will review the current examination practice of the Australian Patent Office, and the prospects of change in the wake of the High Court’s decision.

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Tags: Appeal, Australia, Computer programs, Examination, High Court, Patent Office, Patentable subject matter

Are Patent Offices Being Inundated with Low-Quality AI-Generated ‘Slopplications’?

‘AI slop’, defined as ‘low-quality content created by generative AI, often containing errors, and not requested by the user’, was named Word of the Year for 2025 by the Macquarie Dictionary.  Replace ‘content’ with ‘applications’, and ‘user’ with ‘patent office’ – let’s call them ‘AI slopplications’ – and we would have a good definition of a phenomenon that I suspect is occurring at offices around the world.  In the first 10 months of 2025 (i.e. up until the end of October) the number of provisional applications filed at IP Australia by self-represented applicants was up by a whopping 174% over the previous five years’ average! The overwhelming majority of self-filed applications (98.6%) originate in Australia (i.e. have at least one Australian-resident applicant).

The number of self-filed standard patent applications has also increased, being 82% higher in the first 10 months of 2025 compared with the previous five years’ average.  However, the number of standard patent filings by self-represented applicants remains a small proportion of the total – just 2.6% of all applications filed up until the end of October – and so the significance and impact of this increase remains to be seen.

The only plausible explanation I can think of for this sudden jump in filings by self-represented applicants after years of relative stability in numbers is the increasingly widespread and affordable availability of generative AI.  What is not yet apparent is how applicants are using AI.  Are they using ChatGPT and similar tools to assist in drafting patent specifications describing inventions made wholly by human inventors?  Or are they also using AI to facilitate invention itself?

Either way, I fear that this will not end well for many of these self-filers.  To be clear, there is absolutely no question that AI tools based on large language models (LLMs) can be used to assist in drafting patent specifications.  In the hands of an experienced patent professional who understands the invention to be protected, the full legal requirements for protection, and the various national and international drafting principles, even a general-purpose tool such as OpenAI’s ChatGPT, Anthropic’s Claude, or Google’s Gemini can accelerate the process of preparing a quality patent specification.  But there are also many potential pitfalls to using these tools, and they do not embody the significant expertise, skill and experience of a competent patent professional.  And if the AI is also contributing to the invention, then there may be nothing that is legally protectable at all!

The good news for Australian patent attorneys is that the increase in DIY (with AI) provisional applications has not been accompanied by a corresponding decrease in applicants engaging professional assistance.  The number of provisional applications filed via registered attorneys and firms for the first 10 months of 2025 is down by just 3.2% on the past five years’ average.  And while this does reflect an ongoing decline over recent years, it indicates that the use of AI may be bringing new users to the patent system, rather than taking work from professional advisors.

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Tags: Artificial intelligence, Australia, Large Language Models, Patent analytics, Patent drafting, Patent Office, Patents and society, Provisional applications

How Attorney Firms are Benefiting from an Australian Patent Examination Backlog

The Australian patent attorney profession has been undergoing a significant structural shift over the past decade.  The listing of IPH Ltd in November 2014, and its subsequent series of acquisitions and mergers has created a dominant force controlling multiple major firms, while QANTM IP (QIP)  -- which was originally publicly listed , but now owned by private equity – has become established as a second consolidated group.  These ownership changes were expected to generate economies of scale and competitive advantages, yet the data tells a more complex story.  Independent firms – those remaining outside the IPH and QIP consolidated groups – have been steadily gaining share.  The latest data, presented here, indicates that independent firms have collectively lifted their new application filings from under 9,500 in FY2016 to nearly 15,000 in FY2025, while IPH's filings declined from over 14,000 to under 10,000 over the same period.

Conventional wisdom would suggest that such a dramatic shift in filing volumes should translate into corresponding changes in prosecution revenues within a few years, given the typical 3-5 year lifecycle from filing through examination to acceptance.  However, publicly available financial information, particularly for the listed IPH group, has not shown the revenue declines one might expect from a 30% reduction in new filings.  This apparent paradox raises questions about what is actually happening within the Australian patent prosecution system, and whether current revenue patterns are sustainable or merely a temporary phenomenon masking an inevitable adjustment.

By analysing detailed prosecution event data from IP Australia covering FY2013-25, including filing volumes, examination requests, examination reports, and acceptances across different firm groups, this article reveals a remarkable story. The data shows how factors largely outside the control of attorney firms – particularly IP Australia's examination capacity, backlog management, and recent productivity changes – have temporarily insulated the consolidated groups from the full commercial impact of their declining market share. The findings have significant implications for understanding current industry dynamics and, more critically, for assessing the medium-term prospects of different participants in the Australian patent attorney market.

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Tags: Australia, Patent analytics, Patent attorney profession, Patent Office

Former Patent Examiner Takes IP Australia to Federal Court Over Alleged ‘Abusive Management Practices’

A former IP Australia patent examiner who alleges ‘unlawful, unreasonable, unfair, inefficient, and abusive management practices’ at the government agency is seeking Federal Court review of Fair Work Commission (FWC) decisions that rejected his unfair dismissal claim.

Hendrik Johannes Liebenberg, who worked as a Patent Examiner from October 2012 until May 2024, has applied to the Federal Court of Australia for writs of certiorari and mandamus following unsuccessful FWC proceedings.  His case centres on allegations that routine quality assurance procedures at IP Australia constituted improper interference with his decision-making authority.  He has, additionally, escalated these claims into broader accusations about institutional practices.

For readers unfamiliar with the legal terminology, a writ of certiorari commands an inferior court or tribunal to set aside a decision, and is typically used when the decision-maker has exceeded their jurisdiction or made a jurisdictional error.  A writ of mandamus compels a public official or body to perform a duty they are legally required to perform, or to exercise their jurisdiction according to law.  Both are supervisory remedies allowing superior courts to oversee the exercise of power by decision-makers.

While it is more usual for the Federal Court to review administrative decision under the Administrative Decisions (Judicial Review) Act 1977, the difficulty for Mr Liebenberg is this case is that paragraph (a) of Schedule 1 to the ADJR Act excludes decisions made under employment-related legislation – including the Fair Work Act – from review.  This exclusion reflects Parliament's intention that Fair Work matters should be resolved within the specialist tribunal system rather than through general administrative law review.  To succeed, therefore, Mr Liebenberg will need to show that the FWC fundamentally misunderstood its jurisdiction, not just that it made errors within its jurisdiction.

The case provides a window into workplace dynamics at Australia’s primary intellectual property agency, though the FWC found no merit in the constructive dismissal claim after examining the circumstances of Mr Liebenberg's resignation.

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Tags: Examination, IP Australia, News, Patent Office

IP Australia is Seeking Feedback on Proposed Fee Changes

IP Australia has published a draft of its four-yearly Cost Recovery Implementation Statement (CRIS), which outlines proposed fee changes that would take effect from October 2024.  It is also taking the opportunity to review the hearing costs that may be awarded for Patents, Trade Marks and Designs.  Feedback on the proposals may be provided via submissions to IP Australia’s public consultation page.  Consultation is open until Sunday, 21 January 2024. 

In this article I will be looking in greater detail at some of the changes relating to patents in particular.  Stakeholders with an interest in any of the rights administered by IP Australia (patents, trade marks, registered designs and plant breeder’s rights) should take the opportunity to review the draft CRIS and submit any comments or concerns during the consultation period.  Briefly, on non-patent matters, I note that there are significant changes proposed to the fee structure associated with trade mark opposition hearings, with fees that increase with the number of grounds, beyond the first three, raised in a Statement of Grounds and Particulars (SGP), and with the number of prior trade marks, beyond the first ten, cited under section 44.  For designs, it is proposed to reduce application fees, while the fees for requesting examination will be slightly increased.  For Plant Breeder’s Rights, modest increases to application fees are proposed, however there will be more substantial increases in examination fees, and a doubling of renewal fees.

Registered trans-Tasman attorneys will want to take note that IP Australia is also proposing to increase registration renewal fees by A$50 across the board, which it says is required ‘to assist in covering the cost of administering the Trans-Tasman IP Attorney system.’

In the patents area, the headline changes, discussed in greater detail below, are: modest increases to most filing, examination and renewal fees; a doubling of opposition and hearing fees; a change in the timing (but not amount) of excess claim fees, from being charged at acceptance to (also) being charged at the time of requesting examination; a surprising (and perhaps unintentional) removal of innovation patent filing fees; and significant increases to the level of costs that can be awarded in contested proceedings, including patent oppositions.

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Tags: Australia, Costs, Fees, Patent Office, Public consultation

High Court’s Aristocrat Debacle Leaves Patent Office Practice Unchanged

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.

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Tags: Australia, Computer programs, Patent Office, Patentable subject matter

Patent Examination Delays are Rising at IP Australia

In my previous article I presented some data on Australian standard patent application prosecution events between 2017 and 2021.  While the total number of events (examination requests, examination reports, responses and acceptances) has remained fairly consistent in recent years, the data shows that the number of examination requests filed each year has increased since 2019, but that the number of first examination reports issued remained steady in 2019 and 2020, and fell in 2021.  All else being equal, this would suggest that the number of cases awaiting examination would have grown over this period, and therefore that the response time – i.e. the delay between an examination request being filed and a first examination report being issued – would be increasing.  So I decided to check this by analysing the delays for all initial examination reports issued since 2010.

Sure enough, what I have found is that the median delay has grown from just under seven months in 2019, to just over 11 months for examination reports issued so far in 2022 (although, being early in the year, this most recent data point is preliminary and may not be reliable).  At the same time, however, the 85^th percentile has remained fairly stable, rising from just under 11.5 months in 2019 to slightly over 12 months so far in 2022.  The 85^th percentile is significant, because IP Australia has a service level commitment to issue first reports on applications for standard patents within 12 months of receiving the request for examination, and to meet this commitment 85% of the time.  (At least, it used to have this target, although I have been unable to find a Customer Service Charter Report any more recent than the April-June 2020 quarter that still reports against this particular target.)  It appears, therefore, that despite an overall increase in examination response time for a ‘typical’ case, IP Australia is (just about) maintaining its targeted performance overall.

Even so, with what presently appears to be a growing backlog of applications awaiting examination, and a bumper year of new filings in 2021, it could become increasingly challenging for IP Australia to keep response times under control without increasing its patent examination capacity.  Furthermore, IP Australia’s own reporting indicates that some fields of technology – particularly chemistry, pharmaceuticals, and biotechnology – are experiencing greater delays than others, and falling well short of its targets.  IP Australia is not currently hiring new examiners, and the Australian budget papers released this week show no projected increase in average staffing numbers in the 2022-23 fiscal year.  But it will at least need to replace any staff who might leave.  And the March 2022 edition of its What’s New at IP Australia email bulletin (to which you can subscribe here) invited interested readers to register their interest in examination positions, to be notified when new vacancies are advertised.  Now might be a good time to register, particularly for prospective candidates with a background in chemistry, pharmaceuticals, or biotechnology.

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Tags: Australia, Examination, Patent Office

IP Australia Rises to the Challenge of Surging Demand for Innovation Patents

Last month, IP Australia issued a notification informing applicants that, due to a high volume of new filings, they may experience delays in having innovation patents granted.  Innovation patents are issued following a formalities examination only – substantive examination for novelty, innovative step, and other requirements, occurs after grant, and only upon request.  As a result the delay between filing and grant is typically relatively short, and has historically been less than four weeks.  However, with a phasing-out of the innovation patent system now looming, and Chinese applicants in particular using the system to claim government subsidies on foreign granted patents, innovation patent applications are currently being filed at over four times their ‘normal’ historical rates.  This obviously means a lot of extra work for IP Australia to process all of these additional applications.

The good news is that after letting things get a little out-of-hand over summer (when, presumably, many staff were on annual leave), IP Australia now appears to be bringing the situation back under control.  Average pendency (i.e. the delay between filing and grant) peaked at 68 days for innovation patents granted in March, before falling to 52 days in April.  In both March and April, the number of patents granted exceeded the number of new applications filed, and the number of pending applications fell from a peak of 1229 in February to 879 at the end of April.  While this is still much higher than historical levels of about 100-150 innovation patent applications pending at any given time, it is clear that IP Australia has allocated additional resources, and has ramped-up handling of new innovation patent applications to the point where it is now once again processing them faster than they are being filed. 

Up until March, it looked as though delays could continue to grow.  It now seems likely that average pendency will be back below a month by July.  This is, of course, barring any further surge in demand that outstrips processing capacity – which could certainly happen, given that the final date for filing new innovation patent applications before the phase-out begins is 25 August 2021, and a last-minute rush might be expected.  But, for now at least, it looks like IP Australia has the situation in hand.

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Tags: Australia, Innovation patent, Patent analytics, Patent Office

In 2021 Annual Report, IP Australia Makes the Best of Declining Patent Filings

Today (29 April 2021) IP Australia released the Australian Intellectual Property Report 2021 (‘IP Report’), its annual round-up of filing statistics and other facts and figures from the previous year.  As always, my interest is primarily in the Patents chapter of the IP Report and, this year, much of the data presented in that chapter will not be news to readers of this blog.  Notwithstanding small variations – due to the volatile nature of ‘live’ patent records – the IP Report substantially confirms the figures that I published back in January.  The total number of standard patent applications filed in Australia fell by 2%, mostly due to an 8% decline in ‘direct’ filings, while the number of applications filed via the PCT (Patent Cooperation Treaty, a.k.a. international application) route rose by 1%.  Innovation patent applications increased massively – by a factor of around two and a half – driven largely by Chinese demand for granted patent certificates.  Unfortunately for the state of Australian innovation, provisional application numbers continued on a downward trend, with the IP Report noting that they have fallen by an average of 1% per annum over the last 10 years.

The leading Australian resident applicants for standard patents in 2020 were casino gaming machine developer Aristocrat Technologies, national research institute Commonwealth Scientific and Industrial Research Organisation (CSIRO), innovative electrical appliance maker Breville, the University of Sydney, and Monash University.  The top foreign applicant, for the second year running, was Chinese telecommunications device manufacturer OPPO, followed by LG Electronics, Huawei, Apple, and Qualcomm.  The IP Report also confirms that the top countries of origin for Australian standard patent applications were the US, Australia, China, Japan, Germany, and the UK, and that Chinese applicants came within a few dozen applications of knocking Australian residents off second position on the ladder.

As I have pointed out on numerous occasions, the trends in Australian patent filings have not been good for some time.  Not only are Australian residents making less use of the patent system – standard patent filings by domestic applicants in 2020 were down by 10% on 2019 numbers – but Australia is apparently becoming a less-favoured filing destination for many foreign applicants.  The IP Report tries valiantly to be upbeat, noting that standard patent applications have shown an overall upward trend over the past decade, with 2020 filings 15% higher than in 2011, and that despite the decline (for the second year running) in 2020, application numbers remained ‘higher than the 10-year annual average’.

It is important, however, to view that 15% growth figure in context.  Over the decade from 2010 to 2019 (the most recent year for which data is available from the WIPO Statistics Data Center) filings in the US grew by 27%, in South Korea by 29%, at the European Patent Office by 20%, and in China by an unprecedented 260%.  Of the major patent offices, only Japan experienced a decline in filings – and this is hardly a standard against which Australia should be measuring itself.  It is an easy observation that much of the recent growth in filings has been driven out of China, and that this may not be sustainable, however that is hardly positive news for Australia.  Without significant growth in filings from China, standard patent applications in Australia would have fallen by over 3% in 2020.

The next few years are unlikely to bring a turnaround.  As the IP Report points out, a relatively small decline in filings in 2020 ‘occurred despite the considerable economic impact of the COVID-19 pandemic’ but, because patent filings tend to be a lagging indicator, ‘the effects of the economic crisis in 2020 may not be fully observed until beyond 2021’.

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Tags: Australia, Patent analytics, Patent Office

RePipe Appeals, Following Failed Attempts to Amend

Some 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.

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Tags: Amendments, Appeal, Australia, Computer programs, Patent Office, Patentable subject matter

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

Since 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.

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Tags: Australia, COVID-19, Extensions of time, Patent Office

How Up-to-Date is IP Australia’s AusPat Data?

One of the great resources provided by IP Australia is its AusPat online patent data service.  AusPat enables users to search for Australian patents and applications using a range of options and search fields, view numerous data items for each application, and access most incoming and outgoing correspondence via eDossier.  In my view, it is one of the best available systems for online access of national patent data.  For example, in comparison with the USPTO’s services, AusPat effectively combines the functionality of the US Patent Full-Text Databases, the Public Patent Application Information Retrieval (PAIR) system, and the Patent Assignment Search system, into a single convenient and powerful interface.  And while Australian patent information ultimately finds its way into various other public and proprietary databases, AusPat is the first place that any new filings, changes, or events will be reflected.  It is, therefore, the go-to source for the most up-to-date data on all Australian patents and applications.  I rely heavily upon AusPat for much of the analysis I present on this blog, including the regular updates I have been providing over the past few months on patent filings during the COVID-19 pandemic.

One thing that other users may be wondering is: exactly how up-to-date is the data available in AusPat?  You might think that with almost all filing and other transactions now being conducted electronically, the consequences of any new applicant actions would be reflected immediately in AusPat.  However, that is not quite correct.

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Tags: Australia, Patent Office, Patent searching

Rokt’s Computerised ‘Marketing Scheme’ Fails Patent-Eligibility Test on Appeal

Following an appeal by the Commissioner of Patents, a Full Bench of the Federal Court of Australia has overturned a decision of a single judge of the Court relating to the patent-eligibility of a computer-implemented invention.  The Full Court has ruled that a claimed method and system, developed by Singapore-based Rokt Pte Ltd, for providing ‘a dynamic, context-based advertising system, introducing a distinction between an engagement offer, without a direct advertising benefit, and an advertisement designed to lead directly to the sale of the product’ is not patent-eligible subject matter under the Australian ‘manner of manufacture’ test: Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86.

Broadly speaking, the claimed invention provides a mechanism whereby a user has an opportunity to engage with an offer (characterised by the Full Court as ‘click bait’) while accessing a web site before being presented with targeted advertising.  In this way, advertisements are presented only to those users that are most likely to interact with them, and make a purchase.  Since advertisers must often pay for placement of their advertisements within web pages, the invention provides an improvement in that the costs associated with placing advertisements in front of consumers who do not interact with them may be reduced.

In an earlier Patent Office decision, a Hearing Officer had found that ‘the substance of the invention in this case amounts to business innovation’, which was not patentable, and therefore refused Rokt’s patent application: Rokt Pte Ltd [2017] APO 34.  (A previous decision, relating to an alternative set of claims proposed by Rokt, had reached a similar conclusion: Rokt Pte Ltd [2016] APO 66.)

Rokt appealed to the Federal Court, where the primary judge (Justice Alan Robertson) reversed the Patent Office decision, finding that ‘[t]he invention solved not only a business problem but also a technical problem’, ‘… there was a business problem of attracting the attention of the user and having the user choose to interact with the advertiser, but this problem was translated into the technical problem of how to utilise computer technology to address the business problem’, such that ‘use of computers was integral, rather than incidental, to the invention in the sense that there is an invention in the way in which the computer carries out the business scheme’: Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 at [205]-[208].

The Commissioner, in turn, appealed to a Full Bench of the Federal Court (composed of Justices Rares, Nicholas and Burley), which has now allowed the appeal, finding that ‘the invention is a scheme or, more accurately, a marketing scheme’, that ‘nothing about the way that the specification describes the computer hardware or software indicates that either is any more than a vehicle for implementing the scheme, using computers for their ordinary purposes’, and that ‘the claim amounts to an instruction to carry out the marketing scheme’ expressed at a ‘level of abstraction [which] demonstrates that it does no more than provide a list of steps to be implemented using computer technology for its well-known and understood functions’: Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 at [108], [109], [115].  As such, the Full Court concluded that Rokt’s claimed invention is not a patent-eligible manner of manufacture, and that ‘the learned primary judge erred in finding otherwise.’

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Tags: Australia, Computer programs, Patent Office, Patentable subject matter

The 2020 Australian IP Report: Revisited

Last month, I wrote about IP Australia’s release of the Australian Intellectual Property Report 2020 (‘IP Report’).  I focused in particular on data included in the ‘Patents’ section of the report, and raised some questions about the methodology and the accuracy of some of the results presented.  I am pleased to say that IP Australia (more specifically, Benjamin Mitra-Kahn, who is the General Manager & Chief Economist in the Policy & Governance Group) reached out to me regarding the issues raised in my article, and we have spent the past couple of weeks working through our respective data sets to identify the origins of the discrepancies between our numbers.  IP Australia will be updating the online version of the IP Report to incorporate a number of corrections.  In this article, I will run briefly through the issues that we identified, and present some updated numbers of my own.

Users of the 2019 release of the IP Government Open Data (IPGOD) will want to take note of a problem with the ‘related patent information’ table (a.k.a. ‘ipgod128’), which records data relating to divisional and additional applications, whereby a number of entries are missing corresponding with applications filed during the final weeks of 2018.  This error resulted in my undercounting of divisional applications in 2018, such that I found an increase in 2019 where the IP Report identified a decline. 

Australian organisations, including a number of universities, that might have felt short-changed by the ‘top-five’ list of applicants presented in the IP Report, should be pleased by corrections that will reflect the true numbers of filings they made during 2019.

To some extent, IP Australia and I have agreed to disagree regarding the merits of distinguishing between ‘original’ and divisional applications, and of ranking applicants on the basis of ‘original’ filings rather than total filings (i.e. including divisional applications).  We do agree, however, that not all divisional applications are created equal, and that a more nuanced approach is necessary to develop a better understanding of how applicants use divisional applications, and what implications this may have for the operation of the patent system, as reflected in this tweet from IP Australia’s Office of the Chief Economist:

Hi Mark, thanks for the collaboration offline, and the ongoing conversation. As discussed, divs aren’t 2nd class filings, or perceived as such, but an important part of the current patent application story. Keen to explore how to better categorise them.

— IPAustraliaEconomist (@IPAustralia_OCE) May 8, 2020

While there may still be some minor differences between my numbers and those of IP Australia, due to changes in the live data between the times that we respectively extracted our information, the numbers in this article should be in substantial agreement with those in the revised version of the 2020 IP Report.

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Tags: Australia, IPGOD, Patent analytics, Patent Office

Annual Australian IP Report Spins 2019 Patent Filing Numbers by Devaluing Divisionals

Update (25 May 2020): Following publication of this article, IP Australia reached out to me regarding the issues raised, and we spent a couple of weeks working through our respective data sets to identify the origins of the discrepancies between our numbers.  The result of this collaboration was some improvements and corrections on both sides. Rather than update this article, I have written separately about what we found, and what was done to address the issues identified.  One consequence of this is that the online version of the 2020 IP Report was updated with some clarifications and corrections, so a number of the questions and criticisms raised in this article no longer apply.  The following discussion will make more sense with reference to this earlier version of the ‘Patents’ section of the IP Report, which was archived on 30 April 2020.

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Last week, IP Australia released the Australian Intellectual Property Report 2020 (‘IP Report’).  As has become customary over the past few years, the launch of the IP Report was timed to coincide with World IP Day, which fell on Sunday 26 April 2020.  As my own analysis, published back in January, indicated, the number of Australian standard patent applications fell in 2019, by just under 1%.  The IP Report also confirms my expectation that Chinese patent applicants would surpass Germany and Japan, and push the UK out of the top five, to take third spot in the annual country rankings. Applications from China experienced year-on-year growth of over 45%!

I anticipated that IP Australia would have difficulty placing a positive spin on the 2019 patent filing numbers, given that the decline in 2019 follows two years of growth in patent applications.  However, this has not stopped them from trying, by introducing a new metric which counts ‘original’ applications – i.e. those based on patent specifications being filed for the first time in Australia – as distinct from divisional applications – i.e. those based on the contents of earlier filings.  The apparent implication of the use of this metric in the IP Report is that divisional applications should be ascribed a lower ‘value’ (in some sense) than ‘original’ applications, such that a decline in divisional filings is somehow less significant than a decline in ‘original’ applications. 

Following this same approach, IP Australia has ranked the top applicants of 2019 according to the number of ‘original’ applications filed, ignoring divisional filings.  On this measure, Australia’s biggest filer, Aristocrat Technologies, drops from fourth place, with a total of 238 standard patent applications, to tenth place, with just 96 of those applications being ‘original’ rather than divisional.  An even bigger loser, however, is Apple Inc, which falls from eighth place, with 152 total applications by the conventional measure, to 41^st place on the ‘original filings’ measure (45 qualifying applications), behind Australia’s CSIRO (46 ‘original’ applications, out of 51 total filings).

As I shall explain, I believe that there are a number of problems with the use of ‘original filings’ as a metric.  Furthermore, the ‘Patents’ section of the IP Report unfortunately includes results that I have been unable to reproduce, some significant discrepancies between IP Australia’s data and my own analysis, and statements that do not make sense, even on their own terms.  This is a pity, because the annual IP Report is generally a useful summary of activity during the previous year, and it is important that it should be a trustworthy source of information.

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Tags: Australia, Patent analytics, Patent Office

IP Australia is Providing Free, Streamlined Extensions of Time for Parties Impacted by COVID-19

Update 29 March 2021: IP Australia's streamlined process for obtaining extensions of time ends on 31 March 2021. For more details see: Free, Streamlined Extensions of Time to End at IP Australia, but COVID Impact Can Still be Considered Under ‘Normal’ Procedures.

IP Australia has announced that, as of 22 April 2020 up until at least 31 May 2020, most deadlines associated with Australian patent, trade marks, and design rights – including evidence deadlines in opposition matters – can 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’.  Free extensions are also available for many deadlines associated with plant breeder’s rights (PBR), although due to specifics of procedures and the PBR legislation these are being handled differently, and often on a case-by-case basis.

The streamlined process for requesting an extension of time involves filing the request online, via the eServices portal, and specifying that the extension is required for ‘circumstances beyond the control of the person’ concerned.  The only supporting documentation required is a simple declaration stating that the reason the existing deadline cannot be met is ‘due to the disruptive effects of the COVID-19 pandemic’.  IP Australia has provided a proforma document containing standard text that may be used for this purpose.  At present, eServices still requires the usual fees to be paid, however IP Australia will refund the fee, and is working to update eServices so that the fee can be waived.  It anticipates that this change will be in place by the end of April.

This streamlined process, and the waiving of fees, are (to my knowledge) unprecedented.  It is particularly notable that the process and fee waiver apply to extensions of time to file evidence in opposition proceedings, for which the normal extension fees are A$500 per month, and extensions have been significantly more difficult to obtain since commencement of the Raising the Bar reforms in 2013. 

In ‘normal’ times, a party requesting an extension of time is required to provide substantive evidence, in the form of a declaration along with any supporting documentation, which may be subject to close scrutiny by IP Australia to determine whether the extension is justified.  Depending on the circumstances, and the type of extension being sought, other interested parties may have the opportunity to comment and/or oppose the grant of an extension.  In oppositions, in particular, it is common for other parties to the opposition to challenge requests for extensions of time.

In these ‘abnormal’ times, however, I suspect that challenges to COVID-19 extension requests are unlikely to be entertained by IP Australia. Requests for extensions under section 223 of the Patents Act 1990, need not be advertised for opposition purposes if they are for no more than three months – as is the case under the streamlined process.  Regarding extensions to patent opposition deadlines under regulation 5.9, it appears that IP Australia intends to accept at face value requests based on the standard text, without requiring any further evidence or documentation, which may leave other parties with no real basis to challenge the justification for the extension.  In any event, if challenges to streamlined requests are permitted, they will cease to be streamlined, which would defeat the purpose of the process!

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Tags: Australia, COVID-19, Extensions of time, Patent Office

IP Australia Proposes Minor Fee Changes, Major Changes to Opposition and Other Hearing Costs Awards

Just prior to Christmas, IP Australia announced that it is seeking feedback on its draft Cost Recovery Implementation Statement (CRIS), which outlines proposed fee changes that would take effect from October 2020.  It is also taking the opportunity to review the hearing costs that may be awarded for Patents, Trade Marks and Designs.  The public consultation process closes this Sunday, 16 February 2020.  In this article I will look briefly at proposed fee changes in relation to patents, none of which strike me as unreasonable or contentious.  I am, however, more concerned about proposed increases in the costs that may be awarded in relation to contested hearings, and most particularly patent oppositions.

IP Australia conducts its regulatory role in administering Australia’s system of registered rights (patents, trade marks, designs, and plant breeder’s rights) on a cost recovery basis, i.e. it seeks to cover the costs of these aspects of its activities from the fees charged to users of the system (which these days, for better or worse, it calls ‘customers’).  To do this, it uses various financial and economic systems and models to forecast expected demand and cost of service delivery, and reviews and adjusts fees on this basis every few years.  IP Australia last undertook a fee review in the 2015-16 financial year.

Cost recovery does not require each individual fee to reflect the cost of the nominally associated service.  The fee for requesting examination of a standard patent, for example, is (and will remain, under the proposed fee structure) A$490, which doubtless falls far short of the actual cost of examining an application.  Patent maintenance fees, on the other hand, correspond with minimal and highly automated administrative tasks, and currently rise as high as A$2550 annually, for pharmaceutical patents extended beyond the standard 20 year term.  This reflects the fact that fee setting can serve broader policy purposes, such as providing an incentive for patentees not to maintain patents that no longer hold corresponding commercial value, thus freeing up the patented technology for public use.

Costs in contested hearings, on the other hand, have nothing to do with the operations of IP Australia.  They are amounts, set by regulation, that can be awarded by designated officers of IP Australia against unsuccessful parties in administrative proceedings such as patent oppositions.  They are paid directly by the ‘loser’ to the ‘winner’, and are intended to offset the actual costs of the proceedings incurred by the successful party.  IP Australia is proposing to increase the costs that may be awarded significantly (by more than four times in some cases), on the basis that this will ‘better reflect the actual costs incurred’, and that the proposed costs ‘are based on the practice of the Federal Court’.  Both of these justifications may be true, though that does not automatically make them relevant!

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Tags: Australia, Costs, Fees, Maintenance fees, Opposition, Patent Office, Public consultation

Repipe Rebuffed in Appeal Against Rejection of Patent on Computer-Implemented Invention for Workplace Safety

In a decision issued on 22 November 2019 (Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956), Justice McKerracher in the Federal Court of Australia has found two innovation patents owned by RePipe Pty Ltd to be invalid, and thus liable to be revoked, on the ground that neither was for a patent-eligible ‘manner of manufacture’ under Australian law.  Coming on the heels of the recent five-judge decision in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (for more on which, see ‘Generic’ Implementation of an Abstract Idea is not Patentable, but Does Prior Art have Anything to Do with It?), the Repipe decision is further evidence – assuming any such evidence was needed – of the difficulties now inherent in securing patent protection for computer-implemented inventions, even when the inventions in question satisfy all other requirements for patentability, and reflect considerable investment in the development of innovative and useful technology that was not previously available in the market.

Repipe confirms that where the overall functionality of a computer-implemented invention relates only to excluded subject matter, such as an abstract idea or a business scheme, then the fact that the functionality is embodied via software in a technical system is, in itself, insufficient to confer patent-eligibility.  There must, additionally, be some patentable ingenuity (whatever that might mean) in the implementation itself.  Of course, the relevant implementation details would necessarily be reflected in the claims, and the scope of protection available is therefore correspondingly limited.  This applies regardless of the cost and business risk involved in devising, developing, and bringing the invention to market.

As a result, many software innovators seem to be second-class citizens under the Australian patent system when compared with those working in other fields of technology.  It is difficult to discern any coherent policy basis for this distinction.  The classical economic rationale for having a patent system is to provide an incentive for the risky process of invention, development, and marketing of new products and services.  Once an invention has proven to be commercially successful, competitors can enter the now-established market at considerably reduced risk, even if their production costs are the same as those of the innovator.  Why, then, should patent protection be considered justified for, say, a ‘packing box for shuffled playing cards’, but not for RePipe’s invention of a sophisticated networked system for improving workplace health and safety?  I know which one of these involved the larger investment and business risk in development, and I know which one offers the greater social benefit … and it is not the one that is entitled to patent protection in Australia!

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Tags: Australia, Computer programs, Patent Office, Patentable subject matter

‘Generic’ Implementation of an Abstract Idea is not Patentable, but Does Prior Art have Anything to Do with It?

On Friday the 13^th of September 2019, an expanded five judge panel of the Full Bench of the Federal Court of Australia handed down its much-anticipated judgment in the appeal by Encompass Corporation Pty Ltd against the finding of a single judge that its computer-implemented method for displaying information gathered from multiple sources was ineligible for patenting under Australia’s ‘manner of manufacture’ subject matter test: Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161.  For those of us who had been hoping that this case would bring some much-needed clarity to the law relating to patent-eligibility of computer-implemented inventions, the decision is something of an anticlimax.  The Full Court has unanimously dismissed Encompass’ appeal, easily finding, at [112], that there was ‘no error’ in the primary judge’s ‘ultimate conclusion that no manner of manufacture is involved in the method and apparatus as claimed.’

The concern that many interested stakeholders had with the first instance decision in the Encompass case was the way the judge appeared to conflate considerations of novelty and inventive step with his evaluation of the subject matter of the invention.  As I pointed out at the time, this would violate what I called the ‘ball point pen principle’ (after an analogy drawn in the earlier unanimous Full Court decision of CCOM Pty Ltd  v Jiejing Pty Ltd [1994] FCA 1168).  According to this principle, while advances in technology will generally restrict what is subsequently patentable on grounds of anticipation or obviousness, the question of whether or not something is suitable subject matter for a patent is – or should be – independent of the state of the art.  Put simply, a ball point pen does not cease to be the ‘kind of thing’ for which a patent might, in principle, be granted simply because it is no longer new and inventive.

This issue has significance beyond the Encompass case, because it is now the published official practice of the Australian Patent Office to take the prior art into account when assessing patent-eligibility under the ‘manner of manufacture’ test: see Section 2.9.2.2 of the Patent Manual of Practice and Procedure (as archived on 8 March 2019).

For this reason I had hoped – in vain, as it turns out – that the five judge panel in Encompass would take the opportunity to state expressly, once and for all, whether the Court had intended, by various comments in its two previous decisions on patentability of computer-implemented inventions (Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177) to bring considerations of prior art into the assessment of patent-eligibility.  My own view is that it did not, and that Encompass implicitly reinforces that position.  However, in seemingly being reluctant to expressly criticise the primary judge’s reasoning, the Full Court in Encompass stops short of making any explicit statement to this effect.

The fact is that Encompass was not an appropriate case for the Court to consider broader principles for patentability of computer-implemented inventions.  It was readily able to find the alleged invention ineligible on the well-established basis that the claims merely required generic computer implementation of an otherwise unpatentable abstract idea or scheme.  This finding requires no consideration of the state of the prior art, notwithstanding that the primary judge might have appeared to follow such an approach.

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Tags: Australia, Computer programs, Patent Office, Patentable subject matter