In Australia, one requisite for patentability is patent-eligible subject matter. This area has been in a state of flux lately, with one area of focus being computer implemented methods and business innovations. In the latest Full Court decisions on this subject, the Courts emphasized that:
The invention is to be understood as a matter of substance and not merely as a matter of form when determining subject matter eligibility.1
In the last year, two Australian Patent Office (APO) Delegates have attempted to define this ‘substance’. In one decision, the Delegate defined the substance as the novel or inventive feature of the claimed invention; whereas, in the second decision, the Delegate dismissed this definition and decided that the substance should be considered from the specification as a whole.
Here is a brief outline of the two decisions.
This was an opposition by General Electric to grant of an Ausrail Technologies’ patent application. The patent application was directed to a method for improving timekeeping and saving energy on long-haul trains. Manner of manufacture was one of the grounds General Electric relied on.
According to the specification, the invention performed four main tasks:
When considering the subject matter eligibility of claims including these four features, the Delegate noted that the claimed invention should be understood as a matter of substance and not merely as a matter of form.3 In addition, he noted that the substance of the invention “involves an analysis of the alleged inventive step compared to the prior art”.4
Based on these principles, the Delegate concluded that the substance of the claimed invention is the novel and/or inventive feature of the claims only. In Ausrail’s application, the Delegate found that all features of the claim were taught by a prior art reference except the “generates and displays driving advice to drivers” feature, and therefore considered this feature to be the substance of the invention.
Next, the Delegate assessed whether the identified ‘substance’ was eligible subject matter. In this case, he alleged that mere presentation of driving advice was an abstract and intangible concept that did not amount to patentable subject matter. And because the alleged substance did not amount to patentable subject matter, the entire claim was considered to be ineligible.
The Delegate also made the following comment in paragraph 105:
After the optimal journey profile is determined, the driving advice or information is then displayed to the train operator so that the train can be controlled in a manner to keep the train close to the optimal journey profile. However, the claims do not provide any further detail as to whether the train is actually controlled or operated according to the advice or information – the advice …is only characterised as being able to keep the train on target if the advice or information is followed. (Emphasis added)
After the decision, Ausrail amended the independent claims to include the feature “wherein said train operator drives said train in accordance with said advice.” It remains to be seen whether this step will be considered by the Delegate as part of the substance of the invention and sufficient to make the claims patentable.
The second case was an opposition by Foxtel to grant of BBC’s patent application. The patent application was directed to a system and method for providing individual users access to audio/visual content broadcast on a scheduled basis, where a given user can download the content prior to the scheduled broadcast time of the content. The downloaded content can then be accessed by the user on or after a scheduled broadcast time of the content.
The assigned Delegate in this case also considered the principles from Research Affiliates and RPL Central that the claimed invention should be understood as a matter of substance and not merely as a matter of form when determining subject matter eligibility.
Foxtel submitted that “determining the substance of the invention involves an analysis of the alleged inventive step compared to the prior art.”6 It argued that the substance of the claimed invention “lies in the selection of a specific predefined time” at which content can be downloaded, “which does not provide a technical contribution to the art” and therefore the claims of the opposed application do not define a patentable invention.7
BBC, in response, submitted that the test proposed by Foxtel “would logically mean that an obvious invention” can never be “a manner of manufacture” and that this test or meaning “has not been suggested in any of the relevant case law”.8 It also noted that inventive step and manner of manufacture are two distinct requirements for patentability.9
The Delegate agreed with BBC and noted that Foxtel’s contention was “misconceived and unsustainable”.10 He further explained that manner of manufacture and inventive step have long been established as two distinct requirements of the Patents Act. By suggesting that the substance of the invention can be determined via an analysis of the inventive step compared to the prior art, Foxtel had essentially equated the requirement of manner of manufacture with that of inventive step.11
The Delegate, instead, determined the substance of the invention to lie in providing broadcast content to a plurality of users via download such that users are unable to play the broadcast content prior to a scheduled broadcast time of said content. This substance relates to a technological problem in the context of delivering the broadcast content to the users. A DRM system, personal computer and the Internet provided the necessary technological solution to the problem. Therefore, claim 1 was considered to be a manner of manufacture.12
A major difference in the two decisions is the way in which the Delegates have analysed the claimed inventions. One Delegate considered subject matter eligibility on a feature-by-feature basis, with particular focus on the novel features of the claim. Although he relied on a statement by the High Court in D’Arcy, it is not immediately clear that the High Court intended this test. Moreover, the relevancy of D’Arcy for determining subject matter eligibility of computer-implemented methods may be queried, considering it was related to a different class of claim in a completely different field.
The other Delegate considered subject matter eligibility based on the invention as a whole. He considered that this was an independent inquiry from novelty and inventive step. The degree of independence may be a matter for future debate.
The divergence in the reasoning applied in these decisions also shows the difficulties that arise in determining what is and is not the substance of the invention. Over time further decisions should bring more clarity in this area.
1 Research Affiliates LLC v Commissioner of Patents  FCAFC 150 at  and Commissioner of Patents v RPL Central Pty Ltd  FCAFC 177 at 
2 General Electric Company v Ausrail Technologies Pty Ltd  APO 67
3 Ibid at 100 citing Research Affiliates LLC v Commissioner of Patents at 
4 Ibid at 103 citing D’Arcy v Myriad Genetics Inc. at  and 
5 FOXTEL Management Pty Ltd v British Broadcasting Corporation  APO 19 (12 April 2016)
6 Ibid at 62
8 Ibid at 63
10 Ibid 64
11 Ibid 64
12 Ibid 72