Encouraging new APO decision on Computer-Implemented Inventions

A recent APO decision, successfully handled by PIPERS Patent Attorneys, comes as welcome news for innovators of computer-implemented inventions (“CIIs”).

At issue in Jagwood Pty Ltd [2020] APO 38  (“Jagwood”) were manner of manufacture and inventive step objections (the latter of which is not discussed in this article).

On the “manner of manufacture” issue, the Hearing Officer placed weight primarily on the question of whether the substance of the invention was truly technical. This gives a clue as to which of the “indicia” of CII patentability developed by the cases might be most worthy of focusing on.

The decision is also helpful in reinforcing that an invention’s “technical character” is not in conflict with, or eroded by, any effects the invention might have in the commercial or business realm.

The Invention

AU2018203015 relates to a system for processing electronic payments. In the past, a payer had to send to a payee, on the one hand, the payment, and on the other hand, a financial document explaining what the payment was for (e.g. which invoices it was in settlement of). The two would arrive to the payee separately, with a delay, and would need to be “matched” by the payee at the other end. It was not possible to fit the payment information into a reference field of the payment itself because of strict bandwidth limitations imposed by the banking system.

The claimed invention provides a system wherein a payer uploads a financial document to a central Payment Advisor Computer System (PACS), with the PACS assigning to the financial document a unique Uniform Resource Identifier (URI). The payer then inserts the URI into a reference field of the payment, such that both are conveyed together through the payment clearance system, and show up simultaneously on the payee’s bank statement. The payee can then use the URI as a “key” to access the financial document stored in the PACS.

Applicant’s Submissions

The Applicant argued [1] that both the problem to be solved (the “bandwidth” problem), and the solution offered by the unique architecture of the claimed invention, were of a technical nature. 

The Applicant also urged [2] the Hearing Officer to accept, along the lines of the recent APO decision in Facebook [3], that an invention can be “technical” in substance even if it happens to have advantageous commercial / business effects.
 
The Applicant also placed emphasis [4] on the staple RPL [5] proposition that the computer must be “integral to the invention, rather than a mere tool in which the invention is performed.” Drawing on the likes of Bancorp [6] and Aerotel [7], the Applicant argued that a “proxy” for this is whether the invention could plausibly be achieved without the computer: whether there is a “by head and hand” analogy to the inventive concept (or one that simply utilizes conventional computer technology).

Hearing Officer’s Decision

The Hearing Officer’s manner of manufacture analysis [8] was structured around the “classic” cases – RPL, Research Affiliates, [9] Encompass [10] – and also the oft-cited Aristocrat [11] “indicia”, namely: 

• there must be more than an abstract idea, mere scheme or mere intellectual information;
• is the contribution of the claimed invention technical in nature;
• does the invention solve a technical problem within the computer or outside the computer;
• does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
• does the application of the method produce a practical and useful result;
• can it be broadly described as an improvement in computer technology;
• does the method merely require generic computer implementation;
• is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
• is there ingenuity in the way in which the computer is utilized;
• does the invention involve steps that are foreign to the normal use of computers; and
• does the invention lie in the generation, presentation or arrangement of intellectual information.

It was clear that of the Aristocrat “indicia”, the Hearing Officer placed most weight on the questions of whether a) the underlying problem, and b) the solution offered by the invention, were of a “technical” nature. [12]

Helpfully, he presented both a “non-technical” and “technical” conceptualization of the invention. [13] Ultimately, he found the “non-technical” perspective to be unsatisfying on the basis that “it reduces the invention to an abstract idea by overlooking the necessary elements of the invention”. [14]

The Hearing Officer favoured the “technical” perspective on the basis that “the location of the financial document and the use of this location in the reference field of the electronic payment system are inexorably intertwined with the computing and networking systems. It is a technical solution because this synergistic utilization of technology overcomes the problems faced by the inventor”. [15]

In a comment that will surely be welcomed by CII inventors, the Hearing Officer confirmed [16] that the requisite “technical effect” can be provided by configuring known computer elements in an innovative manner. He also confirmed [17] that inventions pertaining to business methods are not inherently less patentable than those in any other field; appearing to echo Catuity [18] in conceding that the invention might be construed as “a new use of computers and networks which results in a method for use in a business” [19] (emphasis added).

The Hearing Officer appeared to consider the Applicant’s “integral to / no manual analogy” arguments as being perhaps a statement of the obvious in this case. [20]

Takeaways

The Jagwood decision suggests that the requisite “technical effect”, while it must always be at the substance of the claimed invention, can be discerned in a number of ways – in the solution offered by the invention, and / or in the problem it addresses. The decision also serves as a caution against construing the claimed invention at too high a level of abstraction, to the point that its technical character becomes obscured.

The decision is also welcome for its apparent confirmation that an invention that pertains to the “business” realm is not inherently less patentable than any other, so long as the requisite technical effect is present; and that a distinction needs to be made between inventions directed to business methods as such and inventions directed to methods for use in a business or commercial context.  

The decision also arguably shows that Applicants should not attempt to stray too far from the basic “ingredients” of patentability – whether there is at heart something “technical” going on. Attempts to weave a legalistic narrative based on the body of case law are unlikely to impress the decision-maker, at least at the Hearing Office level. 

For advice on protecting your CIIs / software inventions, contact the experts at PIPERS Patent Attorneys: Anna Klepacki (aklepacki@piperpat.com); Jim Piper (jpiper@piperpat.com); or Peter Cartwright (pcartwright@piperpat.com). 

For Australian IP enquiries generally, contact Ian Rose (irose@piperpat.com).

[1] Jagwood at [69] – [70]
[2] At [66] – [67]
[3] Facebook, Inc. [2020] APO 19
[4] Jagwood at [62] – [63]
[5] Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177; 238 FCR 27
[6] Bancorp Services LLC v Sun Life Assurance Co of Canada (US) 687 F. 3d 1266 (2012)
[7] Aerotel Ltd v Telco Holdings Ltd; Re Macrossan’s Application [2006] EWCA 1371; [2007] 1 All ER 225
[8] Jagwood at [50] – [58]
[9] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; 227 FCR 378
[10] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161
[11] Aristocrat Technologies Australia Pty Limited [2016] APO 49
[12] Jagwood at [77] – [83], [86] – [87], and [97]
[13] At [80] – [81]
[14] At [82]
[15] At [83]
[16] At [76]
[17] At [76]
[18] Welcome Real-Time SA v Catuity Inc [2001] FCA 445. The Applicant in Jagwood quoted [128] of Catuity: “what is disclosed by the patent is not a business method, in a sense of a method or scheme for carrying on a business… Rather, the patent is for a method… in a business”.
[19] At [79]
[20] At [72] – [75], and [93]

Author: Anna Klepacki

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