Whether it is possible to patent computer implemented inventions remains a contentious issue in Australia. It certainly isn’t impossible, but the requirements and tests that have been built up over the years through case law lean very much toward a case-by-case consideration.
In 2022, the High court failed to reach a binding conclusion on the matter in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29; 274 CLR 115 (Aristocrat), leaving the Full Court’s position as precedent, despite the High Court disagreeing with portions of it. Nonetheless, the High Court Justices did agree on several factors, despite not reaching a binding decision.
In 2023 UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885 (UbiPark) including the reasoning that a tangible or observable outcome from a computer implemented invention would be patentable. I wrote more about that case here. In particular, the Justice of Ubipark referred to several key points that the High Court had agreed upon in Aristocrat. These are:
- It is the substance of what is claimed, and not the form, that is important: therefore, correctly characterising the invention is critical
- If an invention is not patentable when not implemented on a generic computer, it is not patentable when it is so implemented, and
- An invention may be patentable when there is more than mere implementation, such as when the operation of the computer is improved.
More recently, the Australian Patent Office (APO) held a hearing regarding two patent applications from Canva, the Australian graphic design platform. Let’s look at what these patent applications were for, what the APO decided about their patentability, and what we can learn from the APO’s position.
The Applications
In July 2023, Canva filed for two patent applications, AU 2023210529 (the ‘529’ patent) and AU 2023210538 (the ‘538’ patent), both titled ‘Systems and method for processing designs’. Both contain the same description and drawings (barring minor amendments made during prosecution), differing only in what is claimed. The shared description goes into detail on what is described by the APO delegate as, “a veritable labyrinth of various ways in which the transformation of content between different designs/formats may be achieved.” Primarily, both applications are directed toward generating a slide deck (as in, presentation slides) from an existing source. This is accomplished by using a computer to analyse the existing source and use the analysed data to create the new design. Each of the 529 and 538 patents claim different aspects of this process.
The Objection
Each application went through the usual rounds of argument and amendment during examination. But by the end of the examination period, the Examiner maintained that each application did not define a manner of manufacture and hence were not patentable.
529 Application
The Examiner of the 529 application maintained that the claimed invention was effectively a “scheme that provides for arranging content in a particular way based on particular rules”. The Examiner referred to previous APO hearing decisions Grand Performance Online Pty Limited [2023] APO 20 (‘GPO’); and Apple Inc. [2024] APO 23 (‘Apple’). These cases similarly involved computer algorithms for altering the layout of visual elements and were each found not to define a manner of manufacture.
The Applicants responded that the Examiner’s characterisation was not correct, and that the aforementioned arranging was a consequence of the invention, but not the substance of the invention itself. Rather, the Applicant argued that the invention involves generating new content that is based on sourced design content.
538 Application
The objections and submitted arguments for the 538 Application are broadly similar to that of the 529 Application but focus more on the mapping of source fills to destination frames, as claimed.
Do the Claims Comprise a Manner of Manufacture?
The APO Delegate, having considered the prosecution history of each application, then asked the fundamental question: do the claims comprise a manner of manufacture? Though considered separately, the factors influencing each of the 529 and 538 applications were effectively the same.
The Delegate chose to focus on the considerations of Rokt Pte Ltd, though Aristocrat factors were also considered. A claimed invention must be examined to determine whether it is, in substance, a mere scheme:
- is the contribution technical in nature?
- does the invention solve a technical problem, inside or outside the computer?
- does the invention result in an improvement in the functioning of the computer?
- does the invention require a generic computer implementation, as distinct from one ‘foreign’ to the normal use of computers?
- is the computer merely an intermediary?
Based on this, they stated that the fundamental question to be answered is what the claimed inventions comprise as a matter of substance. In particular: is the contribution to the substance technical in nature? Though the Delegate examined each point individually, the reasoning was ultimately fairly repetitive. Because of this repetitiveness, in this article we will only focus on their reasoning for the first point .
The Delegate considered that the claim clearly uses a computer to carry out the task of outputting a new slide deck. However, the claims do not specify the system or device. This means that it is up to the person skilled in the art (PSA) to decide on which system or device to implement the method. Similarly, the claims only use terms like ‘search’, ‘reading’, ‘data’. They do not describe particular implementations – software, code, etc – of the computer in performing the claimed step. Specifically, the claimed features use only the well-known capabilities of a generic computer to implement an algorithm. Therefore, the implication is that the claim uses generic computer hardware to do normal computer operations. Therefore, according to the Delegate, there is no technical contribution.
The Delegate considered arguments made by the Applicant during prosecution, but did not find them persuasive. In particular, the Applicant had argued that how to go about configuring a computer to perform the desired outcomes is a technical problem and overcoming it is a technical achievement, even if the computer hardware is generic. However, in response the Delegate found that there were no technical details disclosed by the application, so this could not be the case. Therefore, for the PSA, the computer still is just acting as an intermediary between the user and the outcome, and the invention is a series of high-level steps that the PSA must decide how to implement.
The Delegate considered several other Rokt and Aristocrat factors, but ultimately this was the crux of the issue: it was very difficult for the Delegate to be persuaded that a technical problem was being addressed when no technical details have been disclosed. Ultimately the Delegate agrees that the invention is for more than a mere scheme, however, it still falls short of being for a manner of manufacture.
What Can We Learn Here?
Regardless of whether we agree with the Delegate’s conclusions or not, it is useful to pay attention to their reasoning. Ultimately, they have relied on a characterisation of the substance of the invention, following the Rokt and Aristocrat factors, to reach a conclusion on manner of manufacture. My generalised reading of this decision is that, for a claim to be described as making a technical contribution, solving a technical solution to a technical problem, etc., it must have some technical substance. Similarly, if the use of a computer is important to the invention, the computer must act as more than an intermediary for the other factors. Ultimately, it isn’t a surprise that the Delegate has adhered closely to the examination guidelines.
This means that when drafting an application for an invention that relies on a computer, a consideration of the specific technical details should be included in at least the description. The troublesome issue is that, at least for now, this is not necessarily settled law – or rather, the case law remains open to interpretation. Certainly, this APO decision is not legally binding. In general, however, should Canva appeal this decision it could lead to the Federal or higher courts considering the matter, and of course, some other decision may be handed down that does not align with what the Delegate has focused on here.
In the meantime, we can learn from the APO decisions and use that to help our clients get the best possible results. For additional information or advice, please get in touch with one of our experienced attorneys at MBIP!
