Background

Australian patent application 2015298710 (the “application”) was filed on 7 June 2015 by Apple Inc. (“Apple”).

The invention related generally to computer user interfaces, and more specifically to context specific user interfaces for indicating the time using animations presented by a touch sensitive interface. The claims of the application were directed toward the presentation of two animations at different times. Each animation comprised of multiple animation sequences where certain sequences could be reused in the animations.

A first examination report issued on 15 February 2017. On 13 April 2017, a second examination report was issued, due to an internal review by the Australian Patent Office, despite no response being filed in relation to the first examination report. The second examination report included an additional patentable subject matter objection. Specifically the Examiner stated:

“The present invention solves the problem of providing users with something engaging to look at. This is not a problem of a technical nature.

I do not consider that your application involves more than a generic utilisation of well-known functions of a computer, and therefore does not involve any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method.“

On 14 February 2018, Apple filed proposed amendments and requested to be heard in respect of the patentable subject matter objection.

Hearing and decision

Apple submitted during the hearing that it is incorrect, when considering whether an invention constitutes patentable subject matter, to allege that a claimed optimisation is known, thus leading to a conclusion that the claim is not directed toward patentable subject matter.

The delegate agreed with Apple’s submission stating:

40. 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. Nonetheless, RPL[21] 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.

41. Similarly, it is also inappropriate to exclude an invention merely because an idea or concept is known. In fact, section 18 sets out that that for an invention to be a patentable invention, it must meet the requirement of manner of manufacture in accordance with section 18(1)(a), and from a comparison with the prior art base as it existed before the priority date of that claim in accordance with section 18(1)(b). In Aristocrat Technologies Australia Pty Limited [2017] APO 1, the delegate came to the same conclusion when considering the same question in relation to an innovation patent.

Apple further submitted that by producing user interface objects in the manner claimed resulted in a number of benefits including:

1. Provision of a faster, more efficient method for managing context-specific user interfaces.

2. A reduced cognitive burden on a user.

3. A more efficient human-machine interface.

4. Reduction of the number of unnecessary, extraneous, repetitive, and/or redundant inputs.

5. A faster and more efficient user interface arrangement, which may reduce the number of required inputs, reduce processing power, and reduce the amount of time for which user interfaces need to be displayed in order for desired functions to be accessed and carried out.

6. A conservation of power and increase in the time between battery charges for battery powered devices.

In response, the delegate noted that the nature and design of the animation sequences produced were irrelevant to the manner in which the animation sequences were generated, thus the benefits listed in points 2, 3 and 4 were not applicable.

In relation to points 1 and 6, the delegate agreed that less memory was required due to the reuse of animation sequences. However, based on the delegate’s construction, the claims were not found to be limited to only storing a reduced number of animation sequences. Therefore, points 1 and 6 were not considered relevant. The delegate did not see how points 1 and 6 would result in conservation of power.

However, the delegate agreed with point 5 to the extent that it may reduce processing power, but considered this to be inconclusive. In attempting to determine whether the substance of the claim fell within the established principles of what constitutes a patentable invention, the delegate indicated that he must develop an understanding of the state of the art at the priority date of the claimed invention. However, the specification did not provide an overview of the state of the art. In such instances, the delegate indicated that an understanding may be determined with reference to external sources. In this instance, the Examiner had not provided evidence of the state of the art which the delegate could consider. Thus it was not possible to determine whether producing user interface objects by rearranging or reusing animation sequences was part of the state of the art.

The delegate indicated that if, based on the state of the art, it was common to rearrange and reuse animation sequences to produce user interface objects, then clearly the applicant’s contribution would be an unpatentable scheme for ordering animation sequences. However, if the opposite was found, Apple’s claimed invention would be patentable subject matter due to the Apple’s contribution leading to improvement in the operation of the computer system due to the computational burden in producing a user interface object being optimised.

In these circumstances, the delegate considered it appropriate to remit the application back to examination to determine the state of the art. As the delegate’s decision was issued after the acceptance deadline for the application, Apple was provided a further 3 months from the date of the issuance of the decision in which to achieve acceptance of the application.

Discussion

The delegate made the following passing comment in relation to the examination performed for this application:

71. 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. This is particularly important where the general tasks performed by the computer system may be one external to the computer, or if it solves a technical problem related to the running of computers generally.

Increasingly, we are seeing examination reports issued by the Australian Patent Office which do not follow the delegate’s advice in relation to computer implemented inventions. In a number of instances no search has been conducted despite a conclusion that the substance of the invention falls outside the established principles of what constitutes patentable subject matter. If arguments can be presented in response highlighting a technical problem being addressed with a technical solution, it would appear based on this decision that the Australian Patent Office is required to conduct a search to at least define the state of the art which can be used to determine whether the contribution is technical.

This case also highlights the increasing number of hearings being requested in relation to computer implemented inventions in Australia. Applicants should keep in mind that a hearing can always be requested whilst the application is pending. However, as it is possible for the delegate to refuse the application at hearing, we recommend that a divisional application is filed at the time of requesting a hearing to ensure that pending rights are retained should the hearing decision not favour the applicant.

This case also highlights the current test applied by the Australian Patent Office for determining whether an invention is patentable subject matter. The Australian Patent Office generally relies on the state of the art (e.g. prior art) to determine whether the contribution of the invention is technical. This test is somewhat controversial given statements by the Full Federal Court in CCOM v Jiejing 28 IPR 481 which indicate that the requirements for novelty, inventive step and manner of manufacture are separate heads of validity. The Federal Court’s recent decision in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 has been appealed to the Full Federal Court and assigned an expanded bench of five judges indicating that this is an important area of Australian patent law needing consideration. Given the prior art was a significant factor in Encompass which led to a conclusion that the claimed invention was not patentable subject matter, we are hopeful that clearer guidance may result within the next 12 months.

In the meantime, whilst the current test is being applied by the Australian Patent Office, we recommend that technical aspects of the claimed invention which were not well known at the priority date are highlighted in response to patentable subject matter objections. We also encourage applicants which face difficulties satisfying the current test to file a divisional application shortly before the lapsing of the application in order to maintain pending patent rights whilst waiting to see whether a more favourable and clarified test is handed down by the Full Federal Court in the near future.