The Delegate of the Commissioner of Patents has held that eBay’s patent specification contains patentable subject matter (Australian patent application 2015315634). However, the Delegate held that the patent application should not be accepted with the claims as they presently stand – eBay Inc. [2019] APO 10 (19 March 2019)

The Delegate was influenced by Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (11 December 2015). In that case, it was held that:

“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.”

The Delegate also considered Research Affiliates LLC v Commissioner of Patents, [2014] FCAFC 150. There it was held that UK decisions are of assistance in understanding the distinction to be drawn between an unpatentable business method and a claimed invention, which may be patentable if the invention results in an “artificial effect”, within the understanding of that concept as explained in National Research Development Corporation v Commissioner of Patents (“NRDC case”) [1959] HCA 67. One decision that is consistently referred to by IP Australia as an interpretation guideline is Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application, [2006] EWCA Civ 1371. That has led examiners and the Commissioner of Patents to use the entire specification to determine the “substance” of the invention as defined in the claims. The query that follows is whether that substance is a technical contribution to the field.

In this case, the Delegate held that it was not evident that a tangible benefit or technical effect arises from any computing functionality requiring more than mere generic computer implementation. There did not appear to be any technical contribution to the art where the computing system is integral to the claimed invention, rather than a mere tool in which the invention is performed.

However, the Delegate set out that there may be subject matter in the body of eBay’s patent specification from which valid claims could be drafted. For example, “the invention may reside in system operations that may use an algorithm that forms associations, …, to present search query suggestions that are aligned with the search query or query portion by an association other than just a word, token or symbol…”. Other examples are also provided by the Delegate.

The take away is that it is critical that the specification contains as much technical information as possible. And that technical information must be linked to advantageous outcomes. The specification should make it clear that, without a computer, the outcomes are simply not attainable.