In June 2018, the Australian Patent Office rejected in an oral hearing a patent application filed by AirService Digital Pty Ltd, a NSW-based start-up that operated a mobile ordering and payment platform for cafes, hotels, and food trucks.
The rejected application (Australian Standard application No. 2017201360) was a divisional application based on Australian Standard Application No. 2015201340 (“the parent application”). In fact, the parent application itself was a divisional application of another application filed back in 2012 (Australian Standard application No. 2012239843).
Prior to the hearing, the Examiner had rejected the application on the basis that the claims did not define a manner of manufacture, lacked an inventive step, and that certain claims lack clarity.
Based on the records published in the Patent Office’s online database AusPat, at least the first two issues appear to have had also been a problem for the above-mentioned two parent applications, both of which had failed to overcome the objections raised by the Examiner.
Prior to the hearing, AirService submitted amendments to the description and claims which, according to the hearing officer, were sufficient to overcome the clarity objection. The hearing officer therefore focused his decision on the manner of manufacture and inventive step issues.
The invention in the application related to an ordering system and method for a retail establishment such as those which sell food and drink. In the examples described in the application, the provided system and method could allow a customer staying in a hotel to order food and beverage from a restaurant part of that hotel using the customer’s own mobile device.
The claims were directed to, among other things, allocation of a unique “customer identifier” by a “venue data device” (e.g., an “iPAD type device”) associated with the venue. The customer identifier was then stored by the customer’s mobile device. For example, claim 1 was as follows:
A method of placing orders at a retail venue including a venue data device and having a plurality of customers each of whom has a mobile data device, said method comprising the steps of:
(i) said venue data device uploading a venue menu to an internet site;
(ii) downloading an order application from said site to the mobile data devices of said customers;
(iii) said venue data device allocating a customer unique customer identification code to each said customer such that only one customer unique customer identification code is allocated to each said customer and storing said code in said mobile data device of the corresponding customer; and
(iv) displaying the venue menu on said mobile data device to allow a customer allocated a corresponding one of said customer unique customer identification codes to access said menu via his mobile data device to order one or more items from said menu.
Whether the claims contained patentable subject matter
In the Examination Report, the Examiner had rejected the application on the basis that the substance of the invention was allegedly a “mere business scheme” for placing of orders for goods/services such as food/drink at retail venues, and that it involved only “generic, standard or very well-known applications of standard computer technology”.
The applicant, on the other hand, argued that the claimed invention was more than a mere scheme because there was a technical contribution to the art.
The applicant submitted a statutory declaration from an IT specialist, Mr Lucio Piccoli, stating that if a person skilled in the art was given the problem of designing an application for ordering food, the chosen solution would have been to have a central server, rather than the venue device as in the application, to manage customer identification codes.
Mr Piccoli’s declaration also indicated that a skilled person would have decided to store all data on a central server, not on the mobile device as recited in the claims.
On this basis, the applicant submitted that these features were not well-known, and thus the invention constituted a technical contribution to the art and was directed to a manner of manufacture.
The hearing officer, however, took a different view. With regard to using the venue data device to allocate the customer identification codes, the hearing officer considered that (our emphasis added):
“…this is a localised allocation of customer data as opposed to a centralised one, such as from within a central server for example. Either way, such functionality of the retailer’s local device or the central server would not have been anything beyond normal operation of such computing devices at the relevant time.”
In relation to storing the user identifier on the mobile device, the hearing officer regarded that the storage of user data on mobile devices was “ubiquitous at the relevant time”.
Consequently, it was found that, even though these features (as recited in the claims) may be a contribution to the art, they were not “a technical one”.
The hearing officer also considered other features in the claims, e.g., enablement of access to the venue menu and the ordering process by downloading an order application to the mobile device, as well as the system architecture as a whole. However, none of these features was considered exceeding the normal features and functionality of computing devices well before the priority date.
Whether the claims are inventive
Turning to the inventive step issue, the hearing officer considered that a relevant person skilled in the art would be “an applications or systems designer or engineer versed with mobile technologies and their application to facilitate customer and service provider interactions”, and regarded Mr Piccoli as representative of such a person.
The most relevant prior art (D1) in this case described a system for consumers to order goods (e.g., food) and services using a mobile device in communication with a server.
D1 differed from AirService’s application in that the consumers in D1 created and registered their profiles with the central server (i.e., no teaching regarding the venue data device allocating unique customer identifiers). However, the hearing officer found that the allocation of unique customer ID codes by service providers, using appropriate standard computing functionality, was common general knowledge at the relevant time.
Another feature of the application that was not disclosed in D1 was the storage of a customer ID code in the mobile device of the corresponding customer. However, the hearing officer found that this feature had been a routine step in the relevant field. The same finding was made in relation to the remaining features of the claims.
Consequently, the hearing officer concluded that the claims did not have an inventive step over D1.
Having failed on both grounds, the application was refused.
It is worth noting that determining what features were well-known or routine in the relevant art was a key issue in the assessment of not only inventive step, but also when dealing with the manner of manufacture issue. Indeed, some of the reasoning in the inventive step assessment resonated with the manner of manufacture analysis. In recent times, the Patent Office has appeared to combine the inventiveness requirements in the manner-of-manufacture test, despite these grounds of invalidity being formally separate under Australian law.
As previously reported, the Productivity Commission has recommended that IP Australia should reform its patent filing processes to require applicants to identify the technical features of the invention in the set of claims. The Government has accepted this recommendation. This position is now recorded in the Draft Explanatory Memorandum to the Intellectual Property Laws Amendment Bill (Productivity Commission Response Part 2 and Other Measures) 2018. The Bill is intended for introduction into Parliament in 2019.
Following the hearing decision, AirService filed a further divisional application on this subject matter, so further developments may be expected