The Australian Patent Office, on 19 March 2019, issued a decision in eBay Inc [2019] APO 10 in which it refused a patent application for a method of suggesting search terms when using a search engine. The Patent Office found that the invention did not constitute patent-eligible subject matter because it used standard computer functionalities, but the applicant has since been given a period to make amendments that might place the application in order for acceptance.

 Importantly, the decision’s reasoning illustrates the central role that novelty plays when assessing the patent-eligibility of computer-implemented inventions.

Patent Application Relating to Enhanced Search Query Suggestions

Australian patent application number 2015315634, in the name of eBay Inc, is titled “Enhanced search query suggestions”. Unlike the typical autocomplete feature of many search engines which generates suggestions using popular search queries, the patent application describes a method of automatically creating more personalised search suggestions, tailored to a user’s past search interests.

For example, if the user previously searched for “gucci® handbag”, then subsequently typing “belt” might automatically generate the search suggestion “gucci® belt”.

Essentially, the invention works by initially generating a first search query suggestion by matching text entered by a user to a token stored in a global token pool (i.e. a set of tokens from several users’ searches). Next, a second search query suggestion is generated by expanding the first query suggestion based on the user’s local search history.

At the time of writing, claim 1 in the application recited the following:

A computer implemented method, comprising:

receiving, by a server device, at least a query portion from a client device to conduct a search based at least in part on the received query portion;

generating, by the server device, at least a first search query suggestion based at least in part on a determination that at least the received query portion corresponds to at least one token portion stored in a token pool that includes a plurality of tokens generated by the server device;

generating, by the server device, at least a second search query suggestion based at least in part on an expansion of at least a portion of the generated first search query suggestion, wherein the expansion is performed by the server device based at least in part on a session history associated with the client device; and

communicating, by the server device, at least the generated first and second search query suggestions to the client device responsive to the received query portion.

During the examination stage, eBay successfully argued that the claims were novel and involved an inventive step. However, the Australian Patent Office maintained that the claimed invention was not a “manner of manufacture”, essentially meaning that the invention did not constitute patent-eligible subject matter. After receiving a third examination report, eBay requested a hearing.

Hearing Decision – search query suggestions “little more than standard auto-complete techniques”

eBay’s argument was that the invention solved the technical problem of improving the quality of automatically-generated search query suggestions. It was submitted that the invention allowed a user to quickly and efficiently locate information using a search engine.

The Delegate of the Commissioner of Patents who delivered the decision approached the question of patentability by first identifying the substance, or core contribution, of the invention.

The Delegate noted that the substance of the invention was not the way in which the first search query suggestion was generated, because token-based matching predated the invention in question.

Regarding the generation of the second search query suggestion, the Delegate found, by looking through the patent specification, that this was also being generated using what was, effectively, a token-based method in which the previous search queries of the user formed a token pool.

Therefore, in the Delegate’s view, both search query suggestions were being generated from “little more than standard auto-complete techniques”. The Delegate concluded that the invention was not a manner of manufacture because it involved “mere generic computer implementation”.

However, the Delegate also gave eBay a three-month period to amend the claims, observing that the body of the specification contained potentially-patentable subject matter. For example, the Delegate indicated that if the claims were to provide a method of generating the second search query suggestion using more than standard word, token, or symbol associations, that might constitute a manner of manufacture.

Conclusion – invention not a manner of manufacture despite it being novel and inventive

It is interesting that eBay’s invention was found to not be a manner of manufacture on account of its use of standard, known steps to generate search query suggestions, despite the (somewhat counterintuitive) finding that the invention was novel and inventive.

The Australian Patent Office currently determines the patent-eligibility of computer-implemented inventions by examining their “substance”. The present case demonstrates that, in practice, this means extracting certain features of the invention and assessing their novelty in isolation from the other features of the invention. It is still unclear if the Australian courts actually endorse this controversial approach.