Computer-implemented inventions - a sensible approach

A July 2019 patent office decision, Apple, Inc [2019] APO 15, gives some insight into the way in which computer-related inventions can navigate the hurdles relating to the manner of manfacture test in a sensible fashion.

The Invention

The invention in this case was directed to faster, more efficient methods and interfaces for managing context-specific user interfaces. In particular, the invention detailed a method reusing and/or reordering animated sequences being to produce user interface objects.

Approach

After referring to the relevant principles in D’Arcy v Myriad Genetics Inc (Myriad), Commissioner of Patents v RPL Central Pty Ltd (RPL) and Research Affiliates LLC v Commissioner of Patents (Research Affiliates) the hearing officer considered more recent decisions of Watson v Commissioner of Patents (re policy considerations as a factor), Sequenom, Inc. v Ariosa Diagnostics, Inc (re determining the substance of the invention as a starting point), and the first instance decision in Encompass (as to the distinction between abstract idea and computer-implemented invention, and in particular Perram J’s observation at [194] that “‘improvement’ seems designed to capture the computer performing some activity which it was not possible to perform prior to the method”). The determination pre-dated the Full Court decision in Encompass [2019] FCAFC 161, but this approach was held not to be in error: see [105]-[110].

The hearing officer previous characterisations of the invention in some detail. The hearing officer’s analysis also demonstrates the way in which the characterisation of the invention is informed by an analysis of the prior art, and the advance claimed over that prior art.

Whilst this overlap with inventive step is sometimes impugned, it is really both a product of the way the inventive step test was carved out of the manner of manufacture inquiry, and a necessary consequence of the need to consider the “substance” of the invention.

Key finding

Rather than confirming the examiner’s finding that the material claimed was in substance directed to the presentation of aesthetic content, the hearing officer concluded:

[41] It follows that the contribution to the art is a method of reusing animation sequences. This method enables a technical advantage to be achieved. Consequently, based on the information available to me, it follows that I should find that the claims are directed towards patentable subject matter.[fn63]

[fn63] See, eg, Bio-Rad Laboratories, Inc. [2019] APO 26; Bio-Rad Laboratories, Inc. [2018] APO 24; Bio-Rad Laboratories, Inc. [2017] APO 38.

Conclusion

This decision shows the way in which the approach to manner of manufacture for computer-implemented inventions at the Patent Office has matured since the early sea-change in the wake of Research Affiliates and RPL Central. Whilst manner of manufacture issues are never really likely to be simple, it seems they can at least be sensibly determined.