IP Australia has refused to grant a patent for a tax interview in HRB Innovations, Inc. [2018] APO 63. HRB attempted to patent a “system for presenting a simplified tax interview to a taxpayer.”

The patent examiner rejected the application. He applied the principles of D’Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad), Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL) and other cases that require analysing whether the claimed invention, as a matter of substance rather than form, is suitable subject matter for a patent. According to the examiner, the substance of the invention relates to presenting a personalised tax interview for a tax return which is simpler than a full tax interview. As such, it is simply a scheme and, “as a matter of substance”, does not solve a “technical” problem within the computer or outside the computer.

According to HRB, the invention provides a technical contribution. HRB contended that:

• The claimed invention provides an improved user interface.
• The improvements to the technology of the graphical user interface are technological in nature because they use certain analytical techniques that are technical.
• These techniques involve cluster analysis and, as such, the claims incorporate specific technological modifications to improve the functioning of a computer.

But the cluster techniques were part of the state of the art at the relevant time. For example, the patent specification sets out that one of skill in the art will appreciate that many different clustering algorithms are possible. Thus, the delegate held that the substance of the invention relates to the use of cluster analysis to filter information and determine appropriate indicator variables and prototypes, for simplified tax review purposes. The act of using cluster analysis, generally, for its intended purpose, cannot be said to result in improvement in the functioning of the computer.

The delegate cited Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 when considering the question of an improvement in a computer. “Improvement”, according to Perram J, seems designed to capture the computer performing some activity, which it could not previously perform. Given that cluster analysis is part of the state of the art, it could not have caused the computer to be more efficient than had been previously possible.