Patents

Copyright, designs and sufficiency for patents

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I shall be presenting the annual Copyright and Designs Update for IPSANZ in Melbourne on 17 October 2024.

For those attending in person, lunch from 12:30 pm with the talk from 1:00 pm to 2:00 pm.

There is also an online option – but I hope to see you there in person.

Details and registration here.

and a Patents talk

On 24 October 2024, Craig Smith SC and Dr Claire Gregg from Davies Collison Cave Law are presenting on ‘Patent Claims – Support, Sufficiency and ‘Relevant Ranges‘.

Details and registration here.

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Support and sufficiency apply to (mechanical) patents DownUnder

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The High Court has refused Jusand’s application for special leave to appeal [1] the Full Federal Court’s affirmation that Jusand’s patent was invalid on sufficiency and support grounds under the Raising the Bar tests.

In refusing special leave, the High Court simply stated:

The proposed appeal does not have sufficient prospects of success. Otherwise, the proceedings are not a suitable vehicle for the point of principle the proposed appeal seeks to raise.

I think Perram J’s reasons in the Full Federal Court were the first detailed consideration of the operation of these “new” provisions at the appellate level and so they will continue to provide guidance on the meaning and application of the sufficiency and support requirements. (Although one wonders if the second sentence of the High Court’s refusal indicates there may still be some doubt.)

Background

Jusand was the owner of Australian Innovation Patent No. 2019100556 entitled ‘Safety System and Method for Protecting Against a Hazard of Drill Rod Failure in a Drilled Rock Bore’. It had sued Rattlejack alleging that Rattlejack’s SafetySpear infringed claim 1 of the Patent. The trial Judge held there was no infringement and also upheld Rattlejack’s cross-claim that the Patent was invalid and ordered revocation.

According to the specification, the usual practice in underground mining is to excavate a shaft under the ore that is to be mined and then drill up from the shaft to the ore. The bore holes can vary in length from 20m to 60m. The bores are drilled by stringing together lengths of hollow steel tube – drill rods – to make a “string” of drill rods or drill string. Because of the forces involved and the variable geology, however, the drill string may break. The broken or loose drill rod components may become stuck or may fall out unexpectedly.

Evidence at the trial[2] indicated that broken drill string sections could be up to 20m long, weighing 500kg. The impact load of such a falling “projectile” would be 67,000kg.

Thus leaving the mine shaft unsafe; all the more so as the broken drill string might fall unexpectedly.

The Patent proposed a system involving an anchor and an impact reduction member to, in effect, plug the bore hole. The impact reduction member could be tapered along its length up the bore hole so that the force of the falling drill component was translated from the vertical sideways to the horizontal and so acted as a braking force.

Claim 1 in terms stated:

A safety system for protecting against a hazard of drill rod failure in a drilled rock bore above horizontal, and especially a hazard posed by a broken drill rod section within the bore, comprising:

an anchor member configured to be fixed in a proximal end region of the bore adjacent to a rock-face; and

an impact reduction member for reducing an impact of the broken drill rod section striking the anchor member in the proximal end region of the bore, wherein the impact reduction member is configured to be located in the proximal end region of the drilled bore and to extend within the bore above the anchor member to be impacted or struck directly by the broken drill rod section falling within the bore.

You will notice that the “anchor member” and the “impact reduction member” are uncharacterised: the material(s) from which they are made are not specified. Although the claim was for an uncharacterised anchor member and impact reduction member, the Specification relevantly disclosed only things made from steel. It was this lack of specification which led the trial judge and the Full Court on appeal to find the Patent was invalid as lacking sufficiency and support.

Perram J’s reasoning

Perram J gave the judgment, Nicholas and McElwaine JJ agreeing.

Sections 40(2)(a) and 40(3) relevantly provide:

(2)A complete specification must:

(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art [the sufficiency requirement]; and

…

(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.

Perram J began consideration of the issues by noting at [161] that the terms of the section offered no guidance about how much disclosure would be ‘complete enough’ nor what quantum of ‘support’ was required. Accordingly, the meaning of the provisions was ambiguous.

As a result, it was permissible to resort to extrinsic materials to resolve the ambiguities.[3].

Prior to the Raising the Bar amendments, section 40(2)(a) had only required the complete specification, relevantly, to describe the invention fully and s 40(3) had only required the claim to be fairly based on the matter described in the specification.

In Lockwood No 1, the High Court held that these requirements would be met if the patent explained how to perform the invention in at least one way – to make at least one “thing” falling within the scope of the claims. (Perram J noted that under this test the Jusand Patent would be valid.)

In that respect, Australian law had diverged from the law in the UK but the High Court in Lockwood No 1 had explained that was a result of the UK acceding to the European Patent Convention and adopting the different standards sufficiency and support standards rather than fair basing.

Referring to the Explanatory Memorandum, Perram J noted the intention of the amendments had been to overrule Lockwood No 1 and align Australian law with “overseas jurisdictions”, specifically referring to the approach taken in the UK under Patents Act 1977 s 14(3) and (5) and art.s 83 and 84 of the European Patent Convention. Thus, statements in the Explanatory Memorandum included that ‘support’ picked up two concepts:

• there must be a basis in the description for each claim; and

• the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art.

In light of this his Honour concluded at [172]:

It will be seen therefore that the European and United Kingdom provisions are relevantly the same as ss 40(2)(a) and (3). I would conclude from that equivalence, the clear statements made to both Chambers by the Ministers who moved for the bill’s second reading and the Explanatory Memorandum that the purpose of the amendments was to ensure that the Australian law of sufficiency and support developed along the same lines as the law of the United Kingdom and the members of the European Union (each of which is a signatory to the European Patent Convention).

To determine whether the requirements of sufficiency and support under s40(2)(a) and (3) were met, therefore, Perram J accepted at [186] and [190] – [195] that the eight principles propounded by Lord Briggs at [56] in Regeneron[4] as explained by Birss J in Illumina were appropriate.

Application to Jusand’s Patent

As the anchor and impact reduction members were uncharacterised, there were a range of materials which could potentially be used within the scope of the claims.

In seeking to invalidate the Patent, Rattlejack invoked proposition (vii) from Regeneron:

(vii) Nor will a claim which in substance passes the sufficiency test be defeated by dividing the product claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse’s tail. The requirement to show enablement across the whole scope of the claim applies only across a relevant range. Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made. (emphasis supplied)

In Illumina at [277] (in what Perram J described at [190] as “a celebrated discussion of a teapot” illustration), Birss J had explained the concept of relevance for these purposes as turning on the technical contribution or inventive concept. Thus, where a hypothetical claim was to a new teapot with a spout shaped in a new way so as not to drip, while the material from which the teapot was made was relevant to its function as a teapot, that was not relevant in the Regeneron sense as what gave the claimed invention value, utility and purpose was the design of the spout.

This in turn required consideration of what made the claim “inventive” and what its technical contribution to the art is.

At [201], Perram J pointed out that these could be two different things. Echoing Hicton’s Patent, Perram J pointed out that the inventive contribution to a claimed invention may be an abstract idea. However, that was not the patentable subject matter. What the monopoly conferred by a patent was granted for was the claimed invention – the practical implementation of the idea.

From this, it followed that the technical contribution to the relevant art was the product claimed or at [205], in the case of a method, the explanation of how to perform the method disclosed in the specification.

As noted above, the first factual finding was that claim 1 was not limited only to anchors and impact reduction members made from steel. It extended to such things made from anything.

However, relevantly, the Specification disclosed only anchors and impact reduction members made from steel.

Next, based on the evidence before her, the trial judge had held that identifying other suitable materials would involve the person skilled in the art in the exercise of inventive skill.[5]

Claim 1 therefore failed both the sufficiency and support requirements.

At [215], Perram J explained:

…. The invention as claimed was the Safety System which disclosed only a method using an anchor member and a tapered impact reduction member made from steel. Its innovative step was the idea of converting downward weight force into lateral braking forces using the interaction of an anchor member with a tapered impact reduction member. Its technical contribution to the art was taking that idea and explaining how to use it in a Safety System utilising steel. I would therefore see the essence or core of the invention, in terms of Illumina, as involving a consideration of each of these concepts.

His Honour explained that the purpose of the claimed invention was to prevent drill rod sections falling into the shaft. Given the potential forces that such a falling drill rod section could generate, the material(s) from which the anchor and impact reduction member were made significantly affected the utility of the system. As the identification of appropriate materials (other than steel) involved inventive effort, the sufficiency requirement was not satisfied.

Correspondingly, the claim was not enabled across its full scope and the claim was not supported by the description. For example, at [222]:

…. The invention as claimed was a Safety System able to be constructed from a range of materials but the specification showed only how to make it from steel. Thus the monopoly defined by the claims exceeded the technical contribution made to the art. Effectively, if this patent were upheld it would confer upon the Appellant a monopoly over a range of Safety Systems which it has simply not invented. This would reward the patentee for something it has not done and it would prevent others of an inventive disposition from discovering how to make ingenious systems of anchor and impact reduction members from other materials including materials not yet known.

A comment

So far as I am aware, this is the first case in Australia in which the sufficiency and support requirements have operated to invalidate a mechanical patent – these requirements typically arising in cases where classes of chemical compounds and the like have been claimed.

Regeneron’s propositions #5 and #6 are:

(v) A claim which seeks to protect products which cannot be made by the skilled person using the disclosure in the patent will, subject to de minimis or wholly irrelevant exceptions, be bound to exceed the contribution to the art made by the patent, measured as it must be at the priority date.

(vi) This does not mean that the patentee has to demonstrate in the disclosure that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled to be made. Patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range of products within the scope of the claim to be made. But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant, part of the claimed range to be made, as at the priority date. (emphasis supplied)

What will happen in mechanical (or for that matter any other art’s) patents which are not drafted with this precision. For example, to borrow from Birss J’s celebrated teapot example: a patent for a teapot made from a suitable material.

In his Lordship’s hypothetical and unlike Jusand, Birss J assumed the selection of suitable material did not involve inventive skill. That may be sufficient.

As I understand matters, the risk flagged in Regeneron proposition #6 motivated IPTA to file an amicus curiae brief in support of the special leave application.

Dr Claire Gregg and Will Hird at DCC have reported that IP Australia is increasingly raising sufficiency and support objections against such patents. James Lawrence and John Hogan, patent attorneys at, respectively, Addisons and FB Rice provide some recommendations for drafting practices – at least for new applications.[6]

Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 (Perram J, Nicholas and McElwaine JJ agreeing)

  1. Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2024] HCASL 104.  ?
  2. Jusand FCAFC at [216].  ?
  3. s 15AB(1) and (2) of the Acts Interpretation Act 1901.  ?
  4. For ease of reference, the eight propositions have been extracted here.  ?
  5. At [212], Perram J summarised the trial judge’s reasoning: “Since it was a plausible working of the claims of the patent to carry out the invention in materials apart from steel, the trial judge reasoned that to do so the skilled addressee would need to engage in the two endeavours identified by her Honour at J [475]-[479] (set out above): first, the skilled addressee would need to select a material which would be suitable for the Safety System’s construction having regard to the enormous forces to which it would be subjected during the impact event; and secondly, the skilled addressee would need to design the Safety System having regard to the physical qualities of the material thus selected. As the trial judge explained, this was because different materials had different degrees of elasticity and stiffness (‘modulus’) (J [420]-[427]), different compressive strengths (J [428]-[432]), different coefficients of friction (J [433]-[435]), different degrees of ductility (J [436]-[437]) and different behaviours when it came to shearing and galling (J [438]-[440]), as well as having different melting points (J [441]-[442]) (noting that the impact event generates heat).”  ?
  6. James Lawrence and John Hogan, ‘Sufficiency and the Patent Bargain Post-Jusand v Rattlejack: How Much Disclosure is Enough?’ (2024) 135 Intellectual Property Forum 9 at 18 – 19.  ?

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UKSC rejects Thaler and DABUS

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The United Kingdom Supreme Court has ruled that DABUS is not an inventor for the purposes of UK patent law and so Dr Thaler’s applications for a patent claimed to be invented by DABUS have failed.

You will recall that Dr Thaler has applied in the UK (and many other parts of the world) for the grant of patents in his name for inventions said to have been generated by a machine acting autonomously and powered by the artificial intelligence, DABUS.

Section 7 of the UK Patents Act 1977 provides in part:

7 Right to apply for and obtain a patent.

(1) Any person may make an application for a patent either alone or jointly with another.

(2) A patent for an invention may be granted—

(a) primarily to the inventor or joint inventors;

(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;

(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned;

and to no other person.

(3) In this Act ‘inventor’ in relation to an invention means the actual deviser of the invention and ‘joint inventor’ shall be construed accordingly.

(4) Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.

Further, section 13 reinforced the centrality of the position of “the inventor” in the scheme of the Act.

Lord Kitchin pointed out that s 7(2) read with s 7(3) provides an exhaustive code for determining who is entitled to a patent. And, just like s 15(1) of the Patents Act, that is the inventor or someone claiming through the inventor.

Unlike the Australian Act, section 7 of the UK Act also includes s 7(4) which defines the inventor as “the actual deviser of the invention”.

Unlike the approach taken by the Australian High Court, Lord Kitchin (with whom Lords Hodge, Hamblen, Leggatt and Richards agreed) considered it was entirely proper for the Comptroller-General to take Dr Thaler’s statements at face value.

Accordingly, at [56], Lord Kitchin ruled that an inventor for the purposes of the Patents Act 1977 must be a natural person and, as DABUS was not a person, it was not the inventor.

In my judgment, the position taken by the Comptroller on this issue is entirely correct. The structure and content of sections 7 and 13 of the Act, on their own and in the context of the Act as a whole, permit only one interpretation: an inventor within the meaning of the 1977 Act must be a natural person, and DABUS is not a person at all, let alone a natural person: it is a machine and on the factual assumption underpinning these proceedings, created or generated the technical advances disclosed in the applications on its own. Here I use the term “technical advance” rather than “invention”, and the terms “create” or “generate” rather than “devise” or “invent” deliberately to avoid prejudging the first issue we have to decide. But it is indisputable that DABUS is a machine, not a person (whether natural or legal), and I do not understand Dr Thaler to suggest otherwise.

As in the Australian cases, Dr Thaler advanced an alternative claim based on the “doctrine of accession”. Thus, Dr Thaler claimed he was entitled to the patent as the owner of DABUS and so entitled to any fruits of its production.

At [83], Lord Kitchin explained Dr Thaler’s contention based “purely” on ownership of the machine:

The DABUS inventions are, he says, the fruits of (in the sense they were produced by) the DABUS machine that he owns and further, that DABUS was designed to make inventions and so these fruits were by no means unexpected. He also contends that he was and remains the first person to possess the inventions and this provides a proper basis for their ownership. In short, he contends that he derived title by operation of a rule of law (the doctrine of accession) that satisfied the terms of section 7(2)(b) of the Act and conferred on him the right to apply for and secure the grant of patent protection for any inventions made by DABUS.

This contention failed. First, as DABUS was not an inventor, at [84] it gave rise to no rights which could be claimed. That was sufficient for the application to fail.

Secondly, in any event, Dr Thaler’s invocation of the doctrine of accession was entirely misplaced. The doctrine of accession applied to new tangible property (e.g. a calf) produced by an existing tangible property (e.g. a cow), not intangible property such as inventions. At [88] – [89], Lord Kitchin explained:

We are not concerned here with a new item of tangible property produced by an existing item of tangible property, however. We are concerned with what appear (and which for present purposes we must assume) to be concepts for new and non-obvious devices and methods, and descriptions of ways to put them to into practice, all of which, so Dr Thaler maintains, have been generated autonomously by DABUS. There is no principled basis for applying the doctrine of accession in these circumstances.


For these reasons and those given by the Court of Appeal, I am satisfied that the doctrine upon which Dr Thaler relies here, that of accession, does not, as a matter of law, operate to confer on him the property in or the right to apply for and obtain a patent for any technical development made by DABUS.

As the Comptroller-General was entitled to take Dr Thaler’s claims at face value, the Comptroller-General was entitled to reject the applications as they were obviously defective: they did not identify anyone who could be the inventor or any basis on which Dr Thaler could claim to derive title from an inventor.

It should be noted that Lord Kitchin was at pains to point out that the Court was concerned with a narrow question: the meaning of section 7 and associated provisions in the UK Act. It was not concerned, he considered with broader, policy questions. His Lordship explained at [48] – [50]:

The Comptroller has emphasised, correctly in my view, that this appeal is not concerned with the broader question whether technical advances generated by machines acting autonomously and powered by AI should be patentable. Nor is it concerned with the question whether the meaning of the term “inventor” ought to be expanded, so far as necessary, to include machines powered by AI which generate new and non-obvious products and processes which may be thought to offer benefits over products and processes which are already known.


These questions raise policy issues about the purpose of a patent system, the need to incentivise technical innovation and the provision of an appropriate monopoly in return for the making available to the public of new and non-obvious technical advances, and an explanation of how to put them into practice across the range of the monopoly sought. It may be thought that the rapid advances in AI technology in recent times render these questions even more important than they were when these applications were made.


This appeal is concerned instead with the much more focused question of the correct interpretation and application of the relevant provisions of the 1977 Act to the applications made by Dr Thaler. This was the approach taken by the Comptroller, the High Court and the Court of Appeal, and rightly so.

Dr Thaler having failed to identify an inventor through whom he could claim entitlement, the Comptroller-General had been right to deem the applications withdrawn.

Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 (20 December 2023)

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To be estopped or not …

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O’Bryan J has ruled that Vehicle Management Systems (VMS) is not estopped from seeking revocation of Orikan’s patent despite earlier opposition proceedings in which VMS could have raised the allegations, but did not.

Under the pre Raising the Bar versions of the Patents Act, it was clearly established that an unsuccessful opponent was not estopped from subsequently seeking revocation on the same grounds. This was at least because of the different onus: an opponent had to show that it was “practically certain” the patent application was invalid to succeed whereas a party seeking revocation only had to satisfy the balance of probabilities standard.[1] The Raising the Bar amendments, however, sought to change the burden at the examination and opposition stages to the balance of probabilities standard. The debate since then has been whether this meant an unsuccessful opponent was estopped from seeking revocation on the same grounds.

Overview

Orikan is the registered owner of Australian Patent No. 2013213708 titled “Vehicle Detection”, having been assigned the patent by SARB Management Group. It has sued VMS for infringement. In addition to denying infringement, VMS has cross-claimed seeking revocation of the Patent. So, this is another campaign between VMS and SARB-related entities over competing systems and apparatus to detect cars which have overstayed parking.

In this particular application, Orikan was seeking to have VMS’ cross-claim stayed on grounds of Anshun estoppel or, alternatively, as an abuse of process.

Some background

Back in happier days, VMS and SARB had explored jointly developing systems for detecting vehicles which were parked without paying the fee or after the alotted time had expired.

Things didn’t work out and, by a decision handed down in 2013, VMS successfully sued SARB for infringement of one of VMS’ patents for vehicle detection systems.

In 2008, however, SARB had applied for its own patent. That application led to two divisional patents: Australian Patent No. 2011101179 (Innovation Patent), which was filed in 2011, and secondly the Patent the subject of these proceedings, which was filed in 2013. As you might suspect, there was considerable overlap between the claims of the Innovation Patent and the Patent.

In 2012, SARB sued VMS for infringement of the Innovation Patent. VMS defended, including a cross-claim for invalidity on grounds including lack of novelty, secret use and lack of sufficiency and best method. This proceeding settled before trial in 2014.

In 2016, VMS opposed the grant of the Patent. That opposition failed in both the Office and the Court.[2] The Opposition Proceeding in the Court involved extensive evidence and 5 days’ trial. According to O’Bryan J, however, it did not involve the grounds of invalidity or particulars that VMS sought to argue in this proceeding.

In addition to challenging the priority date, clarity and sufficiency grounds, VMS sought to revoke the Patent in this proceeding on grounds of lack of novelty, secret use and failure to disclose the best method.

Given this prior history, Orikan contended VMS’ cross-claim should be stayed on grounds of either Anshun estoppel or abuse of process.

Legal tests

The parties were not really in dispute about the principles.

Anshun estoppel

At [26], O’Bryan J explained:

Anshun estoppel operates to preclude the making of a claim, or the raising of an issue of fact or law, in a subsequent proceeding if the claim or issue was so connected with the subject of an earlier proceeding that it would have been unreasonable, in the context of the earlier proceeding, for the claim not to have been made or the issue not to have been raised in that proceeding …. [3]

Thus, at [28] his Honour considered three conditions needed to be satisfied:

(1) the relevant cause of action, defence or issue must be one that could have been raised in the earlier proceeding;

(2) the same or substantially the same facts must arise for consideration in the second as in the first proceeding; and

(3) it must have been unreasonable in all the circumstances for the party not to have raised the issue in the first proceeding – i.e. it is not enough that the issue could have been raised; in all the circumstances it should have been raised.

The third requirement means the test has an element of discretion and evaluation.

The requirement of “unreasonableness” is a “severe test” and not to be made lightly. O’Bryan J noted one situation where unreasonableness was likely to be established is where a judgment or order made in the second proceeding was likely to conflict with a judgment or order in the earlier proceeding. But, the doctrine is not limited only to such situations.

Abuse of process

Abuse of process is not capable of explanation in terms of closed categories. At [38], O’Bryan J noted the principles governing its application are broader and more flexible than those governing estoppels.

In general terms what needs to be shown is that the use of the Court’s procedures would be unjustifiably oppressive to the party or would bring the administration of justice into dispute. At [39], O’Bryan J noted that this brought into play considerations of the overarching purpose of civil litigation as set out in s 37M.

Why O’Bryan J dismissed Orikan’s application

At [71], O’Bryan J accepted that Orikan, as the assignee of the rights in the Innovation Patent and the Patent, could take the benefit of an Anshan estoppel arising from the earlier proceedings. It had not been a party to the earlier proceedings but, as the assignee, was a “privy” of the SARB entity which had been.

It was not in dispute between the parties that VMS could have raised the invalidity issues it now wished to argue in the earlier Opposition Proceeding. The matters VMS now sought to rely on were either known to it or it ought to have been aware of them. In fact, the grounds and particulars had been asserted by VMS in the Innovation Patent Proceeding and, while they were different patents, they were both derived from the same parent and the claims were substantially similar.

Nonetheless, O’Bryan J considered that it was not unreasonable for VMS not to have raised the issues it now sought to agitate in the Opposition Proceeding.[4]

First, at [75] his Honour considered there was not a relevant risk of inconsistent judgments. His Honour accepted that a finding that the Patent was invalid in this proceeding would be inconsistent with the result in the Opposition Proceeding. As the grounds and particulars relied on in this proceeding were different, however, the basis of an invalidity finding in this proceeding would be different to the basis of the findings in the Opposition Proceeding.

Secondly, O’Bryan J considered at [76] there was a fundamental difference between the nature and consequences of an opposition proceeding and a revocation proceeding. The Opposition Proceeding involved an election by VMS to challenge the Patent on limited grounds. In contrast, in this proceeding, VMS was being sued for infringement and so compelled to come to court. Later, at [80] O’Bryan J noted that his conclusion might have been different if VMS had initiated the proceedings rather than being the respondent.

O’Bryan J also noted that the Innovation Patent Proceeding had not proceeded to trial and so the invalidity claims had not been tested in court.

Thirdly, O’Bryan J considered that allowing the invalidity claims to go forward in this proceeding would not result in more costs and delay than would have been the case if the claims had been brought in the Opposition Proceeding.

There was one overlap with the Opposition Proceeding in that one of Orikan’s witnesses, a Mr Del Papa, had been cross-examined about a particular document and both Mr Del Papa and the document were involved in this proceeding. However, the relevance and cross-examination in the Opposition Proceeding was limited to an issue of entitlement, not in issue in this proceeding.

Finally, O’Bryan J did not place “significant weight” on the public interest in the integrity of the Register or the fact the Act specifically provided for pre-grant oppositions.

O’Bryan J dismissed the abuse of process attack for essentially the same reasons.

An observation

Interestingly, while O’Bryan J did have regard to the in rem nature of patents, the public interest in the integrity of the Register and the specific provision in the Act for pre-grant opposition (and the change in onus), his Honour did not give those considerations much weight. His Honour eschewed adopting a general principle and instead applied an approach very heavily based on the particular facts of the case.

For example, it is often said (as is the case) that defeating an opposition is not a guarantee that the patent is valid. That is also true of an unsuccessful revocation proceeding. The fact one person’s revocation proceeding failed does not preclude anyone else seeking to revoke the patent. And there are cases where the second challenger succeeded despite the failure of the first.

In considering the fundamental difference between the nature and consequences of opposition proceedings and infringement/revocation proceedings, O’Bryan J emphasised VMS’s choice to fight the Opposition Proceeding on limited grounds in light of the nature and purpose of opposition proceedings. At [76], his Honour explained:

But the Opposition Proceeding involved an election by VMS to challenge the validity of the Patent. It did so on limited grounds, and did not raise the grounds and particulars of invalidity that had been raised in the earlier Innovation Patent Proceeding. There is no proper basis to criticise that election. …. The election made by VMS confined the scope of the issues in dispute in the Opposition Proceeding and therefore the costs and time required for its determination. That course was consistent with the overarching purpose of civil litigation expressed in s 37M of the Federal Court of Australia Act 1976 (Cth). It was also consistent with the character and purpose of pre-grant opposition proceedings, which are intended to provide a swift, economical means of settling disputes: Genetics Institute at [19]. Although it is desirable to avoid a multiplicity of proceedings and to ensure that parties address, as far as possible, the issues arising between them in a single proceeding, parties ought not to be encouraged to raise each and every possible claim or issue irrespective of the time and cost associated with doing so. Anshun estoppel must operate conformably with the demands of s 37M, as well as the substantive statutory context in which it is said to arise. (Emphasis supplied)

This suggests his Honour’s conclusion might reflect a reaction to Beach J’s heartfelt paragraph 1784. It is also consistent with a number of extra-judicial comments encouraging some effort on the part of parties to simplify proceedings. It does seem a little odd, however, that an opposition proceeding taking up 5 days’ of the Court’s time and a carefully reasoned 274 paragraph judgment might qualify as a swift economical means of resolving the dispute between the parties especially when the consequences lead to a further infringement proceeding with what promises to be an even more involved revocation component.

Orikan Group Pty Ltd v Vehicle Monitoring Systems Pty Limited [2023] FCA 1031

  1. In at least one case (which I haven’t been able to find again in the time available), the judge did warn the opponent / revoker that it was at risk of indemnity costs if its revocation action also failed.  ?
  2. There was also an appeal to the Full Court which, by the time of the hearing, was limited to the issue of entitlement.  ?
  3. Citing Anshun at 598, 602–3 (Gibbs CJ, Mason and Aickin JJ); Tomlinson v Ramsey Food Processing Pty Limited (2015) 256 CLR 507 at [22] (French CJ, Bell, Gageler and Keane JJ).  ?
  4. Yes I realise that double negatives are “awkward” (to say the least) but that the point!  ?

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ToolGen’s CRISPR/Cas9 patent application rejected

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Nicholas J has ruled that ToolGen’s application for a patent, AU 2013335451, for “what is now a well-known gene editing system known as the CRISPR/Cas9 system” for editing target DNZ sequences in eukaryotic cells. His Honour has allowed ToolGen until 11 August 2023 to bring any application for leave to amend pursuant to s 105(1A).

As the complete specification was filed after 15 April 2013, the Patents Act in the form amended by the Raising the Bar Act applied.

The matter came before his Honour on ToolGen’s “appeal” from an opposition in which the Commissioner’s delegate found that all but one of the claims should be refused but allowed ToolGen 2 months to amend.

At [13], Nicholas J summarised his Honour’s findings:

For the reasons that follow I have concluded:

(a)          None of the claims are entitled to priority based on P1 (s 43(2A)). 

(b)          All of the claims lack novelty or do not involve an inventive step (s 18(1)(b)).

(c)          The complete specification does not provide an enabling disclosure of the invention (s 40(2)(a)).

(d)          The claims are not supported by matter disclosed in the specification (s 40(3)).

(e)          Claim 19 lacks clarity (s 40(3)).

More detailed consideration will have to wait for another day.

ToolGen Incorporated v Fisher (No 2) [2023] FCA 794

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Some talks (not me)

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Coming up to the end of the year, there are events on reforming patent litigation practice and domain name disputes in review.

Patent litigation practice

Calling it “A very IPRIA Christmas”, IP Australia and IPRIA are hosting on 7 December at 5:30 pm an end of year celebration exploring “a wish list of practice reforms for making patent litigation in Australia (including appeals from the Office) more expeditious and cost effective.”

The event will be chaired by Justice Rofe and features Clare Cunliffe and David Shavin KC from the Bar and Lisa Taliadoros from the solicitors’ side of the profession.

Registration is free and attendance can be in person or online – although to assist catering they do ask that you register by the end of Monday 5 December if you are planning to attend at the Law School in Carlton in person.

Domain names

If domain name disputes are more your thing, the Hon. Neil Brown KC is also presenting an “Annual round-up on Domain Name Arbitration”. Topics Neil intends to cover include:

  • how the domain name process works
  • latest trends emerging from the decisions of arbitrators
  • what evidence do you need and how to collect the best evidence
  • the procedures to lodge a claim and how to defend one
  • traps for new players.

While Neil and I haven’t always seen eye to eye in particular cases, Neil has lots of experience both in the UDRP and a number of other regional and country-specific dispute resolution processes.

Neil is giving his talk online via Zoom at 10:00 am (Melbourne time; i.e. UTC +11) also on 7 December 2022.

According to his brochure, there is no need to register; just log-in. I am afraid I cannot reproduce the link so you are probably best just to email him directly.

Some talks (not me) Read More »

Thaler (DABUS) is donged Down Under

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Last Friday, the clock finally ran out on Dr Thaler’s attempt to register a patent in Australia on the basis that the artificial intelligence, DABUS, was the inventor: the High Court refused special leave to appeal from the Full Federal Court’s ruling that an inventor must be a human being.

Perhaps surprisingly, the High Court did not reject the application for special leave on the grounds that an inventor for the purposes of the Patents Act must be a human being. Rather, it dismissed the application on the grounds that it is not an appropriate vehicle for the determination of the issue.

You will recall that s 15(1) of the Patents Act 1990 defines who is entitled to be granted a patent:

Subject to this Act, a patent for an invention may only be granted to a person who:

(a) is the inventor; or

(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or

(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or

(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).

The Commissioner had rejected Dr Thaler’s application at the formalities stage on the basis that an inventor must be a human being. Therefore, Dr Thaler’s application failed at the formalities stage under reg. 3.2C(2)(ii) because the application identified DABUS as the inventor and DABUS was an artificial intelligence only.

It was an agreed fact before the Courts that DABUS was the “inventor”:

MR SHAVIN: …. [Dr Thaler] programmed the computer but he said that the way in which the computer was programmed is it acted independently in its selection of subject matter and in its generation of the invention. So, he says that he truly was not the inventor, but DABUS, the artificial intelligence, he says was the proper inventor.

Two or perhaps three matters seemed to be exercising the panel determining the special leave application.

First, there were questions directed to whether or not the case was simply one of either DABUS qualified as an inventor or there was no inventor at all for the purposes of the Act. One problem with that was that, as it was an agreed fact between the Commissioner and Dr Thaler there was no contradictor to the proposition. Notwithstanding the agreement between the parties, the panel appeared to consider that Dr Thaler himself might have been the inventor:

EDELMAN J: Mr Shavin, your submission would have a great deal of force if it were possible to exclude, immediately, without any possibility of argument, the possibility that the applicant was not the inventor, because then, once that possibility is excluded, one is left with either a presumption of the section that every invention must have an inventor – on your submission – that is wrong. Or, alternatively, an approach an inventor does not need to be a natural person, which meets some of the difficulties that the Full Court has identified. But the difficulty for this Court is that without having any submissions about the starting point, which is whether a natural person here could be the inventor, we are groping in the dark.

The idea being suggested here appears to be similar to questions of authorship in copyright law where there may be questions of degree such that the computer program is merely a tool like, say, Microsoft Word which an author uses to record his or her words compared to the computerised system used to generate telephone directories in the Phone Directories case where, the system having been designed and implemented, the Court found there was no human intervention.[1]

Secondly, if the Act did set up the dichotomy and an inventor had to be a human being, concerns were expressed that would mean there was a “gap” in the legislation – there could be “inventions” that could not be protected because there was no inventor. Thus:

EDELMAN J: If that factual and legal position is correct, and Dr Thaler is not the inventor, then there is a significant hole in the operation of section 15 because it means that you can have an invention but no inventor.

Thirdly, the panel was plainly aware that the status of DABUS as an inventor was an issue being litigated around the world and, in particular, the UK Supreme Court has listed for hearing on 27 February 2023 the legality of the procedural approach taken to reject Dr Thaler’s application.

Where does that leave matters?

Plainly, some sort of question mark hangs over the Full Federal Court’s approach.

So far, the Commissioner has not announced any change to practice about disallowing applications which identify an artificial intelligence as an inventor.

There may be a question whether someone who does not have Dr Thaler’s agenda will nominate an artificial intelligence as an inventor. The panel refusing the special leave application appeared to envisage that the person who owned, or controlled or programmed the computer might legally be able to claim inventorship. For example:

EDELMAN J: There is an easy way the question could have been raised, which could have been if the applicant had listed himself as the inventor and the Commissioner and had rejected that on the basis that he was not the inventor but the artificial intelligence was the inventor, which would then have given rise to the prospect that nobody, for the purposes of section 15, was the inventor.

There are, however, with respect any number of difficulties with this.

For example, as Mr Shavin KC pointed out, that might require the applicant to identify someone as the inventor which the applicant did not believe to be true.

Secondly, with the benefit of the special leave panel’s (non-binding) observations, does one nominate the owner, the controller or the programmer or some combination of all three as the inventor? If one nominated the wrong person, that might provide a ground for revoking any subsequent patent on the grounds of lack of entitlement or more likely fraud, false suggestion or misrepresentation.[2]

Thirdly, how would anyone ever know? In most (if not all) cases, the Commissioner is not going to be in a position to dispute the nomination of a person as an inventor. It might possibly come up in the context of an opposition or infringement / revocation proceedings but that would likely depend on something like the time-honoured tradition of a disgruntled ex-employee blowing the whistle.

If nothing else, if such things are to be protected as patents, it seems what we really need is some form of international agreement one whether they should be patentable and, if so, rules or guidelines for determining who is entitled to be the applicant. There has of course been no rush of international adoption of the extension of copyright to computer generated works. That problem, however, is becoming increasingly important as schoolkids (and millions of others) are happily playing with online AIs to generate their own art works, poems and other materials.

Thaler v Commissioner of Patents [2022] HCATrans 199 (11 November 2022)

  1. Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCAFC 149 at e.g. [118] – [120]. The trial judge, whose decision was upheld in that appeal, was also a member of the panel which refused special leave in Thaler.  ?
  2. Patents Act s 138(3)(a) and (e) – although, in the case of entitlement issues s 138(4) and s 22A may very well excuse inadvertent errors.  ?

Thaler (DABUS) is donged Down Under Read More »

Aristocrat gets special leave

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The High Court has granted Aristocrat special leave to appeal the Full Federal Court’s ruling that Aristocrat’s application for an electronic gaming machine (EGM or “pokie”) was not patentable subject matter.[1]

The patent application

Aristocrat’s application is entitled ‘A system and method for providing a feature game’ – App. No. 2016101967; yet another problematic “innovation” patent.

The Commissioner and Aristocrat were in agreement that the case rose or fell on the patentability of claim 1:

(1) A gaming machine comprising:

(1.1) a display;

(1.2) a credit input mechanism operable to establish credits on the gaming machine, the credit input mechanism including at least one of a coin input chute, a bill collector, a card reader and a ticket reader;

(1.3) meters configured for monitoring credits established via the credit input mechanism and changes to the established credits due to play of the gaming machine, the meters including a credit meter to which credit input via the credit input mechanism is added and a win meter;

(1.4) a random number generator;

(1.5) a game play mechanism including a plurality of buttons configured for operation by a player to input a wager from the established credits and to initiate a play of a game; and

(1.6) a game controller comprising a processor and memory storing (i) game program code, and (ii) symbol data defining reels, and wherein the game controller is operable to assign prize values to configurable symbols as required during play of the game,

(1.7) the game controller executing the game program code stored in the memory and responsive to initiation of the play of the game with the game play mechanism to:

(1.8) select a plurality of symbols from a first set of reels defined by the symbol data using the random number generator;

(1.9) control the display to display the selected symbols in a plurality of columns of display positions during play of a base game;

(1.10) monitor play of the base game and trigger a feature game comprising free games in response to a trigger event occurring in play of the base game,

(1.11) conduct the free games on the display by, for each free game, (a) retaining configurable symbols on the display, (b) replacing non-configurable symbols by selecting, using the random number generator, symbols from a second set of reels defined by the symbol data for symbol positions not occupied by configurable symbols, and (c) controlling the display to display the symbols selected from the second set of reels, each of the second reels comprising a plurality of non-configurable symbols and a plurality of configurable symbols, and

(1.12) when the free games end, make an award of credits to the win meter or the credit meter based on a total of prize values assigned to collected configurable symbols.

(emphasis supplied by Middleton and Perram JJ).

The new or innovative feature lay in the feature comprising the free game integer – integers 1.10 to 1.12. It was apparently common ground that the other features were part of the common general knowledge for electronic gaming machines.

In the Full Court, Middleton and Perram JJ at [3] and [4] explained:

3 It is not suggested that there is anything inventive about Claim 1’s EGM except for its feature game and it is in all other respects an unremarkable EGM. (Because the 967 Patent is an innovation patent strictly the question is whether there is anything innovative about it, but nothing turns on the distinction between inventive and innovative for present purposes). A feature game is a secondary game awarded to a player on the occurrence of a defined event in the ordinary or ‘base’ game of spinning reels, termed a ‘trigger event’. Once the feature game is enlivened by the trigger event the feature game appears and the player is able to play it and potentially to win further prizes. When the feature game is completed the EGM reverts to the base game.

4 The point of feature games is to encourage players to keep wagering on the EGM by making it more interesting to do so. Since the revenue generated by an EGM is a function of the amount wagered upon it – in New South Wales up to 15% in the long run – the more successful a feature game is in keeping the player wagering, the more lucrative the EGM is for its operator. A successful feature game is therefore commercially valuable both from the perspective of the class of persons who operate EGMs and from the perspective of those who manufacture and distribute them to that class. The Respondent (‘Aristocrat’) is part of a world-wide group of companies engaged in the manufacture and distribution of EGMs and is the particular member of the group which owns the 967 Patent.

Their Honours then explained how the free game feature worked at [11] – [12]:

11 The game defined by integers 1.10–1.12 is in fact not a single game at all but rather a family of games with particular common attributes. On the occurrence of a trigger event (integer 1.10) the player is awarded one or more free games of the feature game (integer 1.11). The feature game (integer 1.11) consists of a second set of reels. Amongst the symbols on these reels are ‘configurable’ symbols. The patent does not define a configurable symbol but it does provide for them to be assigned prize values by the computer on which the game is played, which is known as the game controller (integer 1.6). A preferred embodiment of the invention suggests that the configurable symbol may be overlaid with the amount of the prize which has been assigned to it (although this is not a necessary feature of integer 1.11 and any symbol will do). In that preferred embodiment, the configurable symbol is an image of a pearl and it is configured by the overlaying on that image of different prize amounts, e.g., some pearls appear with ‘250’ and others with ‘1000’, where those figures represent credits.

12 Returning to the feature game, each time a configurable symbol appears in the display grid at the end of the free game that particular symbol position on the relevant reel stops spinning for any remaining free games and the configurable symbol remains locked in place in any subsequent play of the feature game (i.e. if the player still has any free games left). When the player eventually runs out of free games in the feature game a prize is awarded related to the number of configurable symbols which have been locked in place (integer 1.12). In the preferred embodiment the prize is the sum of the assigned values on the pearls which have been frozen on the display grid but integer 1.12 is consistent with the prize being calculated in some other way.

Burley J

At first instance (on appeal from the Commissioner), Burley J considered that the case law required a two stage assessment of patentable subject matter:

  1. The initial inquiry was whether or not the claim was for a mere scheme or business method of the type that was not the proper subject matter for a grant of a patent.
  2. If so, a second inquiry arose: whether or not the claim involved the creation of an artificial state of affairs where the computer was integral to the invention, rather than a mere tool in which it was performed. That is, was there invention in the computerisation of the claimed method?

Each step was to be undertaken as a matter of substance rather than mere form.

Applying that methodology, Burley J avoided the whole mere scheme or business method controversy by holding that the claim was for a mechanism of a particular construction where the integers interacted to produce a particular product – an EGM.

While this blogger welcomed the result, it did raise a rather awkward question: why did putting the integers in a box create patentable subject matter when essentially the same functionality could also be supplied over a network including, dare one say it, the Internet.

The Commissioner appealed.

The Full Court

All three judges (Middleton, Perram and Nicholas JJ) unanimously allowed the appeal. Middleton and Perram JJ delivered the main opinion and Nicholas J delivered a separate concurring opinion.

All three judges accepted unreservedly that a mere scheme or abstract idea was not patentable subject matter.

All three judges also accepted that whether something is patentable subject matter was to be determined as a matter of substance rather than mere form.

Middleton and Perram JJ

At [14] – [15], Middleton and Perram JJ considered that the feature game itself defined by integers 1.10 to 1.12 was a mere abstract idea for purposes of patent law. This was because either it was the definition of a family of games with common attributes and so akin to the rules of a game. Or it was because it was a method of increasing player interest in the EGM and so increasing the operator’s gaming revenue. On that view, it was just a business scheme or scheme.

At [16], their Honours accepted that an invention which physically embodied an abstract idea and gave it some practical application could be patentable subject matter. Thus, a mechanical poker machine which allowed a game (the abstract idea) to be played could be patentable. In such a case, however, the patent would protect the physical embodiment and not the abstract idea:

But the patent protects the invention which is the poker machine and not the abstract idea consisting of the game which it plays. This is consistent with decisions on board or card games to the effect that the game itself, no matter its ingenuity, does not comprise patentable subject matter but the physical apparatus used for playing the game (such as cards or the board) may do so ….

Crucially, their Honours then held that the implementation of the game by means of an unspecified computer program could not be a manner of manufacture unless the implementation resulted in some development of computer technology rather than its utilisation. At [18], their Honours said:

The implementation of an abstraction such as that disclosed by integers 1.10–1.12 by means of an unspecified computer program to be executed on the computer which is the game controller will not give rise to a patentable invention unless the implementation itself can be seen as pertaining to the development of computer technology rather than to its utilisation …. [2]

Middleton and Perram JJ next accepted that Burley J’s approach could be workable where the subject matter of the claimed patent was obviously implemented in a computer. In other cases, however, it had the potential to lead to a wrong result especially where “for example, whether a claimed physical apparatus such as an EGM is, in truth, no more than a particular kind of computer.”

Instead, Middleton and Perram JJ proposed at [26] a different two-step analysis:

(a) Is the invention claimed a computer-implemented invention?

(b) If so, can the invention claimed broadly be described as an advance in computer technology?

In the present case, the claimed invention was a computer-implemented invention.

First, although the apparatus claimed was an EGM (or poker machine), it was in substance a computer. At [32] – [34], their Honours found that the EGM was a game control computer (integer 1.6) attached to a random number generator (integer 1.4, another computer) with some input and output devices (respectively, integers 1.2, 1.3 and 1.5 (input) and 1.1 (output)) with associated software instructions (integers 1.7, 1.8 and 1.9 and the feature game 1.10 – 1.12).

Secondly, to avoid the (erroneous) conclusion that the claimed invention was for the practical implementation of an abstract idea in a device, at [50] their Honours considered it was necessary to distinguish between a claim for an invention which was a computer and a claim for an invention implemented in a computer.

As a claim for either type of invention could appear to be a claim for a computer, it was necessary to identify what was in fact the substance of the claimed invention.

Here, the correct characterisation of the claim had to take into account the two elements of the claim: one element being the EGM (in effect, the computer) and the other element being the feature game and, importantly, the feature game was the only innovative feature of the claim.

As the feature game was to be executed in the computer, at [56] Middleton and Perram JJ considered the relationship of the feature game elements to the computer elements was one of implementation. Accordingly, the claim was to a computer-implemented invention.

Turning to the second question (b), Middleton and Perram JJ held that the claimed invention was not directed to an advance in computer technology. At [63], their Honours said:

Because the invention is the implementation of a feature game on the computer which is an EGM, the next question is whether what is put forward as inventive (or innovative) about Claim 1 pertains to the development of computer technology or merely its use. The fact that integers 1.10–1.12 leave it entirely up to the person designing the EGM to do the programming which gives effect to the family of games which those integers define inevitably necessitates the conclusion that Claim 1 pertains only to the use of a computer. Indeed, it purports to do nothing else. Claim 1 is silent on the topic of computer technology beyond that the person implementing the invention should use some.

It did not matter that the claim improved player engagement or improved subjective satisfaction. That had nothing to do with developing or advancing computer technology. Similarly, the use of configurable symbols for prizes was of no assistance. That might advance gaming technology but was not an advance in computer technology.

Nicholas J

Nicholas J reached the same conclusion but by a somewhat different route.

Like Middleton and Perram JJ, his Honour started from the proposition that mere schemes and abstract ideas are not patentable. At [115] Nicholas J considered that to be patentable the case law required a claimed invention to relate to some technological innovation:[3]

The Full Court noted at [100] the distinction drawn in Research Affiliates at [94] between a technological innovation which is patentable and a business innovation which is not. The use of the expression “technological innovation” emphasises the need to identify a technological contribution in a field of technology. The desirability of providing patent protection to technological innovations is reflected in Art 27(1) of the Agreement on Trade Related Aspects of Intellectual Property Rights which relevantly provides that “… patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application …”. The language of “technological innovation” has now been adopted in s 2A of the Act which refers to the promotion of economic wellbeing through technological innovation as an object of the Act.

An interesting invocation of the new Objects clause in the Act.

At [116], Nicholas J considered it was important to avoid an excessively rigid or formulaic approach to this issue. This was because the technological advance may lie in the field of computer technology. However, the required technological advance could also lie in a field of technology outside the computer:

… it is not appropriate to adopt an excessively rigid or formulaic approach to the question whether a computer implemented scheme is a manner of manufacture. This is especially true in situations where there may be no clear distinction between the field to which the invention belongs, and the field of computer technology. There may well be a technological innovation in the field of technology to which the invention belongs even though it cannot be said that there has been some technological innovation in the field of computers. The field of the invention may encompass different fields of technology that have their own technical problems that lie “outside the computer”. Moreover, the solutions to these problems may necessarily rely upon generic computing technology for their implementation. That does not necessarily render such solutions unpatentable.

His Honour gave as an example at [120] a computer-implemented invention for running a refrigerator in a more energy-efficient way. This might not involve an advance in computer technology but could well be patentable where the invention lay in the field of refrigeration technology. So, there could also be patentable subject matter in the way a gaming system or machine functioned even if there had not been an advance in computer technology.

Turning to Aristocrat’s patent application, Nicholas J considered at [135] that Burley J’s two-step test did not adequately address the Commissioner’s submission that the claim was for nothing more than the (unpatentable) rules of a game implemented in generic computer technology for its well-known and well-understood functions.

Citing RPL at [96], the fact that the feature game instructions were embodied in a computer was not sufficient to qualify as patentable subject matter. While the purpose of the invention was to provide a different and more enjoyable playing experience, the claim was not directed to overcoming any technological problem. At [141], his Honour explained:

The specification does not identify any technological problem to which the patent purports to provide a solution. Nor did the expert evidence (insofar as it was made available to us) suggest that the invention described and claimed in the specification was directed to any technical problem in the field of gaming machines or gaming systems. Rather, as the specification makes clear, the purpose of the invention is to create a new game that includes a feature game giving players the opportunity to win prizes that could not be won in the base game. Ultimately, the purpose of the invention is to provide players with a different and more enjoyable playing experience. The invention is not directed to a technological problem residing either inside or outside the computer.

Generic computer technology / software

While acknowledging that the phraseology had been used in earlier Full Court decisions, Middleton and Perram JJ considered at [35] to [42] that testing whether the claimed invention merely involved a generic computer or generic software was not “especially helpful”. It was preferable to focus on whether the claimed invention related to an advance in computer technology.

In contrast, Nicholas J (who had participated in the earlier cases) was not so troubled. At [112], his Honour considered it could be a useful signpost to patentability (or not) to ascertain whether the computer or software was just conventional computer technology being used for its well-known and well-understood effects.

Where to now

The law relating to “manner of manufacture” is a mess.

Following NRDC and before about the mid–2000s, the issue hardly, if ever, came up. Since the mid–2000s, there have been numerous cases; it is perhaps no exaggeration to say there are more, indeed way more, cases each year than in the previous 50 years.

And, unless one is prepared to say that it’s a computer-related invention and so it is not patentable subject matter (which the Courts repeatedly do not say), it is very hard to say what will pass the threshold and what will not.

One issue is that the cases are replete with comments like there is nothing new or inventive about that. That suggests that what is really the issue is lack of novelty or inventive step.

That though gives rise to a whole set of sub-issues. First, the whole situation is exacerbated by the abominations called “innovation patents”, which don’t actually require any invention, just that what is claimed (in effect) be new.

Secondly, proving lack of inventive step is a complicated, expensive and risky gamble – especially under our law before the Raising the Bar amendments.

Thirdly, while cases like CCOM, IBM and Welcome-Catuity could provide a principled approach to this issue, that could well end up with Australian law granting patents in circumstances where the USA and the EU would not. Not a situation the Productivity Commission would favour. And, it is far from clear that any clear or consistent approach has emerged in either jurisdiction, especially the USA.

The reason, or at least one of the reasons, why NRDC was a “watershed” in patent law was that it got rid of the artificial pigeon-holes or categories of “vendible product” which, as the NRDC judgment so tellingly demonstrated, had resulted in such inconsistent and unpredictable results to the test of manner of manufacture. Instead, it adopted an open-ended, flexible approach directed to achieving the objects of patent law.

Against that background, one might argue that Nicholas J’s approach, with respect, allows a degree of flexibility and forward-thinking which may not follow from the approach taken by Middleton and Perram JJ. Whether his Honour’s approach provides any more certainty may be debated but at least it would avoid a narrow categorisation. Whether that is an approach that finds favour with the High Court, or what direction it might take, remains to be seen.

[Some typos were corrected on 24 June 2022]

  1. That is, not a ‘manner of manufacture’ for the purposes of Patents Act 1990 s 18(1)(a) and 18(1A)(a). Exceptionally, special leave was granted on the papers.  ?
  2. Citing Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177; 238 FCR 27 at [96] and [102] (Kenny, Bennett and Nicholas JJ).  ?
  3. Nicholas J considered that Research Affiliates at [115] – [119] (and RPL Central applying it) broadly equated the requirement for a technical contribution or technological innovation to the “artificially created state of affairs” required under the NRDC test.  ?

Aristocrat gets special leave Read More »

More on DABUS – this time in Old Blighty

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Ann Dufty, whom many of you will know, has pointed out to me that Dr Thaler’s lack of success in the UK was not limited “merely” to rejection by UKIPO. Dr Thaler’s patent application has been rejected by Marcus Smith J sitting in the High Court of England and Wales.

Under the Patents Act 1977 (UK) s 7(2) is in similar terms and, one might say, to the same effect as s 15 of the Australian Act:

(1) Any person may make an application for a patent either alone or jointly with another.

(2) A patent for an invention may be granted –

(a) primarily to the inventor or joint inventors; 

(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom; 

(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned; and to no other person.

(3) In this Act ‘inventor’ in relation to an invention means the actual deviser of the invention and ‘joint inventor’ shall be construed accordingly.

(4) Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.”

Sub-section 7(3) does not have an obvious counterpart in the Australian legislation but, DABUS aside, one would think Australian law is to the same effect. Putting to one side the question whether or not an AI can be an inventor, Australian law would consider the person who made the invention the inventor.[1]

In the English case, Dr Thaler’s substantive arguments were essentially the same as those advanced in Australia.

As to the meaning of “inventor”, Marcus Smith J at [45(3)] first noted that Lord Hoffmann in Yeda had agreed with Laddie J’s view that an inventor was a “natural person”:

The inventor is defined in section 7(3) as “the actual deviser of the invention”. The word “actual” denotes a contrast with a deemed or pretended deviser of the invention; it means, as Laddie J said in University of Southampton’s Applications [2005] RPC 220, 234, the natural person who “came up with the inventive concept.” It is not enough that someone contributed to the claims, because they may include non-patentable integers derived from prior art: see Henry Brothers (Magherafelt) Ltd v Ministry of Defence [1997] RPC 693, 706; [1999] RPC 442. As Laddie J said in the University of Southampton case, the “contribution must be to the formulation of the inventive concept”. Deciding upon inventorship will therefore involve assessing the evidence adduced by the parties as to the nature of the inventive concept and who contributed to it. In some cases this may be quite complex because the inventive concept is a relationship of discontinuity between the claimed invention and the rior art. Inventors themselves will often not know exactly where it lies.

Marcus Smith J then noted that he had not been cited any authority which explained why inventors were confined to natural persons only. His Lordship said at (a):

There is no authority to which I was referred or which I have myself been able to find which explains why the inventor is limited to natural persons only, as opposed to including also legal persons. Whilst one can see the need to limit Class (a) and so the term “inventor” to someone having personality, the exclusion of legal persons from the definition seems less clear-cut. The 1977 Act could, after all, have explicitly referred to “natural persons” rather than just the “inventor”.

Next his Lordship pointed out that DABUS was not, on any view, a person. Then, in contrast to Beach J at [135] – [145], Marcus Smith J considered that the requirement for a valid patent to have an inventive step was decisive:

It seems to me that, when once the notion of an “inventive step” is factored in, the restriction of the term “inventor” to natural person becomes inevitable. An “invention” by definition[29] must involve an “inventive step”, which is something “not obvious to a person skilled in the art”.[30] It is difficult to see how an inventive step can conceived of by a corporation – which must act through agents – without also striking one of those agents. In other words, the inventive step in the mind of a natural person is attributed to the corporation, which only has the inventive step in its “mind” by virtue of such attribution.[31] There is some sense in keeping the definition of inventor close to that which must arise out of the mind of an individual.

Accordingly, DABUS was not an inventor for the purposes of UK law.

Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat)

  1. University of Western Australia v Gray [2009] FCAFC 116; 179 FCR 346 at [248] citing [Polwood Pty Ltd v Foxworth Pty Ltd][polworth] (2008) 165 FCR 527. For the counterparts to s 7(1) of the UK Act see ss 29 and 31.  ?

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DABUS “over there”

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Judge Brinkema, sitting as a District Court Judge in the Eastern District of Virginia, has upheld the USPTO’s rejection of Thaler’s DABUS applications on the basis that DABUS cannot be an inventor under the US Act.

In the United States, Dr Thaler has two patent applications – US Application Serial Nos 16/524,350 and 16/534,532. In both, DABUS was the nominated inventor and Dr Thaler claims entitlement on the basis of assignment.

As you will no doubt recall, DABUS is a “creativity machine” or artificial intelligence.

To highlight the ludicrousnessfictional nature of the universe we are operating in, Dr Thaler as the owner of DABUS executed the assignment to himself:

In view of the fact that the sole inventor is a Creativity Machine, with no legal personality or capability to execute said agreement, and in view of the fact that the assignee is the owner of said Creativity Machine, this Assignment is considered enforceable without an explicit execution by the inventor. Rather, the owner of DABUS, the Creativity Machine, is signing this Assignment on its behalf.

When the America Invents Act was passed, amongst other things it inserted a definition of “inventor” into the Act so that 35 USC §100(f) provides:

(f) The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.

Perhaps (with respect) unsurprisingly, Judge Brinkema ruled that “individual” meant a natural person.

In doing so, her Honour was fortified by the natural or ordinary meaning of the word. Contextually, there were also other references in the Act where Congress had used the term “individual” in reference to the inventor. (For example, §115(a)(1) and (b)(2).)

In addition, the Supreme Court had construed the term “individual” in the Torture Victim Protection Act as referring to a “natural person”. And several Federal Circuit decisions had declared that “inventors must be natural persons” albeit not in the context of the meaning of §100(f).

Judge Brinkema then explained that Dr Thaler “having neither facts nor law to support his argument” contends that policy considerations and the general purpose of the Constitution’s Patent Clause required the statute to be interpreted to permit AIs to be inventors:

Allowing patents for AI-Generated Inventions will result in more innovation. It will incentivize the development of AI capable of producing patentable output by making that output more valuable …. Patents also incentivize commercialization and disclosure of information, and this incentive applies with equal force to a human and an AI-Generated Invention. By contrast, denying patent protection for AI-Generated Inventions threatens to undermine the patent system by failing to encourage the production of socially valuable inventions.

Patent law also protects the moral rights of human inventors and listing an AI as an inventor where appropriate would protect these human rights …. [I]t will discourage individuals from listing themselves as inventors without having contributed to an invention’s conception merely because their name is needed to obtain a patent. Allowing a person to be listed as an inventor for an AI-Generated Invention would not be unfair to an AI, which has no interest in being acknowledged, but allowing people to take credit for work they have not done would devalue human inventorship.

Judge Brinkema considered that binding rulings of the Supreme Court and the Federal Circuit repeatedly held that policy arguments could not override a statute’s plain language. Her Honour also pointed out that, when Congress passed the America Invents Act, AIs were in existence and it was aware of them. Moreover, the USPTO’s own consultations had not exposed any strong support for AIs to be inventors.

Ruling against Thaler, Judge Brinkema concluded:

As technology evolves, there may come a time when artificial intelligence reaches a level of sophistication such that it might satisfy accepted meanings of inventorship. But that time has not yet arrived, and, if it does, it will be up to Congress to decide how, if at all, it wants to expand the scope of patent law.

What does this mean for Australia?

Plainly, the American context is not directly applicable to Australia since, as Beach J pointed out at [118], our Act does not have a definition of “inventor”. So, there is much greater scope for policy arguments to operate.

In that connection, the USPTO report cited by Judge Brinkema can be found here.

Ordinarily, I would be on the side of progress: the NRDC view of the world rather than D’Arcy v Myriad. Our courts, of course, must fit within the D’Arcy v Myriad world view unless Parliament were to bestir itself.

Apart from South Africa (which I understand does not undertake substantive examination of patent applications), Dr Thaler’s applications have been rejected on the ground that an AI is not an inventor by the UKIPO and EPO as well as in the USA. Government policy, which appears to have aligned with the Productivity Commission‘s argument that Australia as an intellectual property importing nation should not be out of step with the international environment, would suggest that an AI should not qualify as an inventor. Can we really afford to keep repeating the mistake made in the 3M case? However, an appeal is pending in the EPO. Maybe there will be an appeal in the USA too but the Federal Circuit’s prior indications do not augur well for the success of that.

It is also difficult to comprehend why, if as our Courts have ruled, that authors for copyright purposes must be humans, the same does not apply to inventors. Of course, our law now explicitly recognises moral rights as part of an author’s rights and there is no corresponding provision under Australian patent law. But both types of rights are justified by the same rationales – natural law or Lockean theory of property and, even, the so-called utilitarian theory.

I guess we shall see.

Thaler v Hirshfield ED VA, 2 September 2021 1:20-cv-903 (LMB/TCB)

Lid dip, Prof. Dennis Crouch at Patently-O.

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