On 20 August 2018, the Australian Patent Office gave Apple Inc. another chance to patent a fancy way of displaying time on iPad, iPhone and Apple Watch devices. The Patent Office had initially rejected Apple's patent application on the basis that it was directed to an aesthetic, rather than technical, development, which is not the kind of thing that patents protect. The Patent Office has now reconsidered its approach, and has given Apple a further opportunity to demonstrate that it has indeed made a technical advance, before it reaches a final conclusion on Apple’s patent application.
The Patent Application: Context-Specific User Interfaces
In June 2015, Apple filed Australian standard patent application no. 2015298710, entitled "Context-specific user interfaces". It identifies Apple's Chief Design Officer, Jony Ive, as one of the inventors.
The patent application describes the use of animations when displaying the time on a touch sensitive display: the illustrations in the patent application show a small square display, much like the Apple Watch display. In one example described in the patent application, twisting the crown of the watch rotates a globe of the Earth while making a corresponding update to the time. In another example, a butterfly is shown flying in one direction when the watch is activated in the morning, and in another direction when the watch is activated in the evening.
With this patent application, Apple was attempting to protect a method of showing two different animations at two different times of the day (say, morning and evening). Each animation has three phases: a start, a middle and an end. The morning and evening animations have the same start phase and end phase, and differ only in their middle phases. Oh, and the animations take place while the present time is being displayed.
Initial Rejection by the Patent Examiner: Not Technical
In Australia, patents aren’t granted for developments just because they are new and inventive: the new developments must also be patentable subject matter. Patents won't be granted for business methods, for example. They also won't be granted for works of art, or for inventions that just improve the look or aesthetics of a device or thing. We've looked at this patentable subject matter requirement in the context of other decisions, such as those in the RPL Central, Research Affiliates, Encompass and Bio-Rad cases, amongst others.
In this case, an Examiner at the Patent Office rejected Apple's application because they did not consider it sufficiently technical. In rejecting Apple's application, they stated (amongst other things):
From reading your application as a whole the substance of the alleged invention is a presentation of specific aesthetic content.
Key factors to considering patentable subject matter identified by the Full Court in [the RPL Central decision] include whether the contribution of the invention “solves a technical problem within the computer or outside the computer or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed”.
The present invention solves the problem of providing users with something engaging to look at. This is not a problem of a technical nature.
In other words, Apple's invention was about aesthetics, and not about a technical advance deserving of patent protection.
Examiner's Rejection Overturned
Unhappy with this rejection, Apple requested a hearing, and the matter came before a Delegate of the Commissioner of Patents.
The Delegate found that the Examiner had been overly narrow in his consideration of patentable subject matter issues. In his written decision, the Delegate made statements such as:
It is inappropriate to conclude that an invention contains solely excluded subject matter simply on the basis that it is a computer running an algorithm.; and
t is also inappropriate to exclude an invention merely because an idea or concept is known.
The Delegate also endorsed an aspect the RPL Central case in the following way:
[The RPL Central case] sets out that the invention must contain more than an abstract idea, and must involve the creation of an artificial state of affairs where the computer is integral to the invention. Simply said, the computer must be more than a mere tool in which the invention is performed.
User Interfaces and Aesthetics
Under current Australian law, an analysis of whether an invention involves patentable subject matter starts out with a determination of the "substance of the invention". The Delegate found that Apple's invention was not directed to aesthetics, or the mere display of intellectual information - the claims of the application were not directed to what was displayed, but how it was displayed. He found that the substance of the invention was directed towards an interface which was designed to generate and display user interface objects in a specific manner.
Apple says that it has "Improved the Computer"
Apple argued that its technique of re-using start and end phases for the morning and evening animations, and only replacing the middle phase, resulted in a number of technical improvements, including:
However, the Delegate found that a reduction of cognitive burden, an improvement in interface efficiency, and a reduction of numbers of inputs (items 2-4 above) related to what was displayed, not how the displayed information was produced, and so were not the products of the claimed invention. With respect to efficiency and conservation of power, the Delegate found that the processor within the device would still need to render all three phases in both the morning and evening animations, so in practice there would not be any substantial reduction in power consumption or processing.
The Importance of the State of the Art
In determining whether the substance of the invention was patentable, the Delegate considered that he needed to understand the state of the art when Apple filed its application. His reasoning was as follows:
If one would commonly rearrange and reuse animation sequences to produce user interface objects, then clearly [Apple's] contribution lies in the scheme for ordering the animation sequences, which would not lie within the established principles of what constitutes a patentable invention.
If the invention relates to the storage of six animation sequences but the use of only four sequences, then there is no technical improvement in the computer, such as the use of less memory. Thus, even if the rearranging and reusing of animation sequences is known in the art, this would not be a patentable invention as it does not lead to an improvement in the computer. The result is aesthetic.
However if the opposite was found, then clearly [Apple's] contribution lies in the concept of re-arranging animation sequences, which leads to improvement in the operation of the computer system itself. That is, in performing the steps of the claimed invention, the computational burden in producing a user interface object is optimised. It follows that [Apple's] contribution would be technical in nature, and would lie within established principles of what would constitute a patentable invention.
Because the Delegate did not have enough information about the state of the art, he remitted the matter back to examination, and gave Apple three months to prove the state of the art and have the application accepted.
An Opportunity for a Lesson
Having determined that Apple should be given a second chance, the Delegate need not have gone further. However, he considered it necessary to make some more general comments about the approach taken to patentable subject matter.
Echoing the sentiments expressed by the UK hearing officer in the Landmark Graphics Corporation case, the Delegate noted:
The present case provides an example of why it is crucial, when assessing the substance of the invention, that one should not apply too narrow a view. … [O]ne should not immediately conclude that an application is not for a manner of manufacture just because it may fall, generally within what typically constitutes excluded subject matter. Rather, an assessment of where the substance of the invention may lie should be approached with a holistic point of view.
Implications for Other Patent Applications
This decision is a demonstration of the difficulties associated with undertaking a rough classification of an invention as relating, for example, to software or computers (or user interfaces), and using this as a basis to assess whether an invention constitutes patentable subject matter. It suggests that a flexible, holistic, case by case methodology should be adopted to understand the true nature of the invention, in view of the state of the art when the patent application was filed.