The Australian Patent Office has recently issued a positive decision (eBay Inc. [2020] APO 49) on a computer implemented invention
It was found that the substance of the invention provided a technological solution to a technical and physical problem, rather than being a mere scheme, abstract idea or business method. Accordingly, the claims were ruled to be for a manner of manufacture.
The Application
The patent application (the Application) filed by eBay Inc. (the Applicant) pertains to a navigation device that considers location, time, and congestion to assist people to move around a crowded venue to arrive at their point of interest in an efficient manner.
Examiner’s Objection
During examination of the Application, the Examiner argued that the capacity to obtain and displaylive location information was well-known in the art and stated that nothing in the claim specifes any improvement to such a process. The Examiner further argued that the presently claimed arrangement or method is simply an abstract idea that is put into a computer, which when implemented on a general purpose computer, might result in the convenient display of useful information at a location but which does not improve any technical aspects of a general purpose computer. The Examiner maintained that the invention does not define a manner of manufacture.
Applicants Submissions
The Applicant disagreed with the Examiner’s comments and proceeded to request a hearing. The Applicant presented what they considered to be the technical, practical, and useful aspects ofthe system and the method, and in addition the physical aspects of using time and congestion toupdate the interface with real time data.
Decision of the Delegate
After reading the Applicant’s submissions and the specification as a whole, the Delegate firstly agreed with the Examiner that the individual components have not been improved in a technical manner. However, the Delegate went on to disagree with other aspects of the Examiner’s report, concluding that the substance of the invention appeared to lie in the combination of the integersthat solve a technical problem. The Delegate stated at paragraph 43:
“In combination the claims define changing the physical directions provided to a userbased on at least the current time, a time to start or restart of the event and congestionalong the route to get to the point of interest. The provision of physical directions forthe user to take, as claimed, is not considered to be abstract or implementing a business process, but rather a physical and technical solution to a physical and technical problem that provides a practical and useful result”
The Delegate considered and applied the principals established in Aristocrat Technologies AustraliaPty Limited [2016] APO 49 (‘Aristocrat’). The delegate found that at least the following twoprincipals were satisfied by the substance of the invention:
– Is the contribution of the claimed invention technical in nature?
– Does the application of the method produce a practical and useful result?
Satisfying the above two principals of Aristocrat was enough for the Delegate to overrule the Examiner and conclude that the Application was for a manner of manufacture and is therefore patentable.
Key Takeaways
Due to the requirement for computer implemented inventions to provide a technical contribution, it is ideal to reference technical limitations being addressed in the patent specification. For a computer implemented invention to be found patentable, not all factors indicative of patentable subject matter are required to be satisfied. Highlighting any physical steps, physical products, physical apparatus and/or physical results could assist in demonstrating the patentability of a computer implemented invention.
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Faran Ward
ASSOCIATE
PATENTS: ENGINEERING
+61 7 3011 2200
[email protected]
Andrew Cale
PRINCIPAL, ENGINEERING / ICT
PATENTS: ENGINEERING & ICT, DESIGNS
+61 7 3011 2200
[email protected]
