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Showing posts with label patent. Show all posts
Showing posts with label patent. Show all posts

Patentable Subject Matter in Australia

The Federal Court of Australia has sided with the Patents Office and upheld a rejection of a patent application for an invention that improves the timeliness and accuracy of risk information.  It was decided by the judge that the claimed invention was merely a business method or scheme for sharing and completing work place health and safety documents, and was thus unpatentable.

See Repipe Pty Ltd v Commissioner of Patents (No 3) [2021] FCA 31  https://jade.io/article/783336

Amazon's patent rejected in Australia

Amazon was refused a patent in Australia on the grounds that the invention was not patentable subject matter.

See Amazon Technologies, Inc. [2021] APO 7  https://jade.io/article/785911

The patent application was directed to the field of computer resource virtualization.  Providers, such as Amazon, manage large-scale computing resources that can be accessed on demand by their many customers via virtual machines.  This allows various computing resources to be efficiently and securely shared by multiple customers. 


Can an AI machine be an inventor?

The Australian Patents Office has decided that an AI machine cannot be an inventor for the purposes of granting a patent.

"Section 15(1) is inconsistent with an artificial intelligence machine being treated as an inventor, since it is not possible to identify a person who can be granted a patent."

Further, the person who operated the AI machine was also not an inventor:

"I have considered the alternative option that Dr Thaler is the inventor.  It seems clear that Dr Thaler asserts that he did not devise the invention but merely acquired knowledge of the invention from the artificial intelligence machine.  In the light of JMVB Dr Thaler would not be the inventor."

See Stephen L. Thaler [2021] APO 5

The impact of AI on IP

The UK Intellectual Property Office has announced a call for views on artificial intelligence and intellectual property. In particular, the UK IPO wants to hear about the implications that AI might have for IP policy, and, likewise, what impact IP might have on AI. 

See the full consultation: https://www.gov.uk/government/consultations/artificial-intelligence-and-intellectual-property-call-for-views

The consultation closes on 11 November 2020.

Software Applications Hard to Patent in Australia

The decision today of the Full Court in Commissioner of Patents v Rokt  further clarifies the position in relation to whether a computer implemented method can be patentable in Australia.  

The decision follows a series of decisions considering similar issues, which each focus on whether particular software can be the subject of a patent.  In summary, the Full Court finds that the software in question in this case, which related to a method of presenting targeted advertising to a consumer, was not a patentable invention, as it was merely a method for using the well known and understood functions of a computer.

The decision reinforces the fact that a method which gets a computer to do something it has not done before is not patentable – to be patentable the method would have to enable the computer to do something which it was previously unable to do. 

The law of patentable subject matter in Australia is illogical and discriminates against inventors who implement their inventions in software.

Who owns the copyright and inventions produced by an AI machine?

These articles are some of the interesting articles dealing with ownership of copyright and patentable inventions produced by an AI machine or robot.
  • Machine learning to machine owning: Redefining the copyright ownership from the perspective of Australian, US, UK and EU Law. European Intellectual Property Review(2018) 40 (11), pp. 722-728.  https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3293518
  • Artificial Intelligence, Copyright and Accountability in the 3A Era: The Human-like Authors Are Already Here: A New Model, 2017 M. L. R<. 659   https://digitalcommons.law.msu.edu/cgi/viewcontent.cgi?article=1199&context=lr
  • When Artificial Intelligence Systems Produce Inventions: The 3A Era and an Alternative Model for Patent Law (March 1, 2017). Cardozo Law Review, http://cardozolawreview.com/wp-content/uploads/2018/08/RAVID.LIU_.39.6.5-1.pdf
  • Recognizing Artificial Intelligence (AI) as Authors and Investors under U.S. Intellectual Property Law, 24 Rich. J.L. & Tech. i (2018), https://jolt.richmond.edu/files/2018/04/Pearlman_Recognizing-Artificial-Intelligence-AI-as-Authors-and-Inventors-Under-U.S.-Intellectual-Property-Law.pdf


  • Also, have a look at these videos about machine generated art:

    Patentable Subject Matter

    Rokt is fighting in Federal Court to have a patent application allowed.  The Commissioner of Patents is opposing the grant of the patent:  An invention that simply puts "a business method or scheme into a computer" is not patentable, the Commissioner of Patents told a court on the first day of a highly anticipated trial over a rejected software patent application by marketing tech startup Rokt.

    The judge hearing the case is Justice Robertson.  The oral argument went for 3 days, and finished on 20 July 2018.  The judge is now writing a written decision.

    See Australian Financial Review background story, and summary of Patent Office decision being appealed is here.

    See blog post here.

    Business Method Patents In Australia

    After a long delay, the Australian Federal Court (Appeals Division) has finally decided the case of Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177.  This is an appeal from an appeal from a decision by the Commissioner of Patents not to grant a patent to a method and system for computerised collection of information relevant to assessment of a person’s competency for a recognised qualification standard.

    The case considered whether this invention was patentable subject matter in Australia.

    The Court decided that this invention was not patentable subject matter in Australian.

    "A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well- known and understood functions.

    Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or wifi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?

    ... it is apparent that, other than the integers providing that the computer processes the criteria to generate corresponding questions and presents those questions to the user, the method does not include any steps that are outside the normal use of a computer. It is not suggested that the creation of the plurality of assessable criteria themselves form the basis of the claimed invention. They are present on the NTIS website from which they are retrieved. It is not suggested that the presentation of the questions or the processing of the user’s responses involve ingenuity themselves or that this constitutes the requisite manner of manufacture. 

    We conclude that the claimed invention is to a scheme or a business method that is not properly the subject of letters patent."

    See also IP Whiteboard

    United States Federal Circuit Judges Express Concerns for Current State of Patent Eligibility Law

    There will be no en banc review of a Federal Circuit panel decision that an important medical diagnostic method is ineligible for patent protection under 35 U.S.C. 101. However, in opinions accompanying the order denying review, several Federal Circuit judges expressed concerns for medical diagnostics under the current state of patent eligibility law. Ariosa Diagnostics, Inc. v. Sequenom, Inc., Fed. Cir., No. 14-1139, 2 December 2015.

    The patent at issue is directed at a process for detecting paternally-inherited fetal DNA in maternal blood samples and for performing a prenatal diagnosis based on that DNA. This method permits the diagnosis of possible birth defects without using highly intrusive measures.

    The Federal Circuit panel decision acknowledged that the invention in this case revolutionized prenatal care. However, it ruled that the claimed method is patent-ineligible under Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012), because it acts on natural phenomenon with well-understood, routine, and conventional steps. In a concurring opinion, Judge Linn reluctantly agreed but only because of the Supreme Court’s sweeping and unnecessary statements about patent eligibility.

    The Federal Circuit on December 2, 2015, denied the petition for en banc review.

    To read the opinions accompanying the en banc order in this case, click here; to read the panel decision in this case, click here.

    History of Software Patents in the United States

    A good article from the National Law Reviewing regarding the history of software patents in the U.S.

    See History

    Computer Implemented Method Not Patentable Subject Matter in Australia

    A unanimous Full Federal Court in Australia today decided that a computer implemented method of creating an investment index is not patentable, on the basis that the substance of the claimed invention – an abstract idea or scheme – was itself not patentable subject matter, and simply implementing that invention via a computer would not render it patentable.

    See Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150

    See also this case note.

    Many internet related inventions may not be patentable subject matter in Australia as a result of this decision.

    The Master Switch

    I have just finished reading an excellent book, called "The Master Switch" by Tim Wu.  It is not a legal book, but more of an economic history.  It has a number of references to patent law.  Well worth reading.

    A Town Like Alice

    The U.S. Supreme Court decided the Alice Corp v. CLS Bank patent case today.

    In a unanimous decision authored by Justice Thomas, the Supreme Court today affirmed the Federal Circuit’s en banc decision invalidating the patents asserted by Alice Corporation against CLS Bank International as ineligible for patent protection under 35 U.S.C. §101 because they are directed to an abstract idea. See Alice Corporation Pty. Ltd. v. CLS Bank International et al. (U.S. June 19, 2014). 

    In an opinion by Justice Thomas, today’s Supreme Court opinion held that:

    [T]he claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.

    In applying Mayo step one, the Court determined that Alice’s claims were drawn to the abstract concept of intermediated settlement (i.e., the use of a third party to mitigate settlement risk). Rejecting Alice’s arguments that the abstract-ideas category is confined to preexisting fundamental truths that exist apart from any human action, the Court ruled that intermediated settlement has long been a fundamental practice in our system of commerce, and recognized that Alice’s claims to intermediated settlement were not meaningfully distinguishable from the risk hedging claims it previously held to be abstract in Bilski v. Kappos, 561 U.S. 593 (2010).

    In a brief concurring opinion, Justice Sotomayor, joined by Justices Ginsburg and Breyer, opined that claims to business methods are ineligible per se for patent protection, because they do not qualify as a process under 35 U.S.C. §101.

    See note from WilmerHale and prior blog posts below.

    Software and Internet patents

    On Monday, the United States Supreme Court is scheduled to hear arguments in what has been described as the most important intellectual property case in a decade: Alice v. CLS Bank.  One party in this case is an Australian company, that owns the patent in question.

    Prior blog posts are here and here

    A NYTimes opinion article is worth reading.

    Computer Implemented Method Patentable in Australia

    RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871

    Broadly, the claimed invention related to the assessment of the competency or qualifications of individuals with respect to recognised standards. It was implemented using a computer.

    Claim 1 included the following steps:

    (a)    a computer retrieving via the internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
    (b)    the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
    (c)    an assessment server presenting the automatically-generated questions via the internet to a computer of an individual requiring assessment; and
    (d)    receiving from the individual via their computer a series of responses to the automatically-generated questions, the responses including evidence of the individual’s skills, knowledge and experience in relation to each of the elements of competency and performance criteria, wherein at least one said response includes the individual specifying one or more files on their computer which are transferred to the assessment server.

    The Federal Court of Australia today determined that this claim recited patentable subject matter.

    U.S. Patent Decision - The Alice Case

    CLS Services v. Alice Corporation was decided yesterday by the Court of Appeals for the Federal Circuit, en banc.  See Judgment.  Alice Corporation is an Australian company.  Its U.S. patent was held to be invalid as it did not claim patentable subject matter.

    "Upon consideration en banc, a majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 101."

    There were a number of judgments.  The footnote to one judgment states:

    "No portion of any opinion issued today other than our Per Curiam Judgment garners a majority. The court is evenly split on the patent eligibility of the system claims. Although a majority of the judges on the court agree that the method claims do not recite patent eligible subject matter, no majority of those judges agrees as to the legal rationale for that conclusion. Accordingly, though much is published today discussing the proper approach to the patent eligibility inquiry, nothing said today beyond our judgment has the weight of precedent."

    Australian Federal Court Limits Patentability

    A recent Australian Federal Court decision limits the scope of patent protection for business methods implemented by computer.  The invention in question related to securities investing and, more specifically, to construction and use of passive portfolios and indexes.

    The court denied patentability, stating:

    "The implementation of the method of the claimed invention by means of a computer, at the level articulated in claim 1, is no more than the modern equivalent of writing down the index on pieces of paper. On the face of the Specification, there is no patentable invention in the fact that the claimed method is implemented by means of a computer. The Specification asserts a patentable invention, not in the use of the computer, but in the particular series of steps that give rise to the generation of the index. Those steps could readily have been carried out manually. The aspect of computer implementation is nothing more than the use of a computer for a purpose for which it is suitable. That does not confer patentability.

    The enquiry into what constitutes a patentable invention is still evolving. It is not to be tied to particular notions of what was understood to be a manufacture at any particular point in time. However, while new developments in technology might be seen to widen the notion of what is patentable, the modern availability of computers as a standard means of implementing arithmetic or computational processes, which could have been implemented manually in the past, does not carry with it any broadening of the concept of a patentable invention."

    See Research Affiliates LLC v Commissioner of Patents [2013] FCA 71

    Hacktivist raided

    Swiss Hacktivist was raided at the request of U.S. authorities for data theft and then publishing what was hacked. https://amp.9news.com.au/...