IP SPOTLIGHT JUNE 22

’FAST-TRACKING’ YOUR AUSTRALIAN

While it is possible that the Commissioner may yet appeal this decision of the Federal Court, the writer considers that an appeal would present considerable difficulties. As noted above, both the judge in this case (Burley J.) and his colleague in the other case referenced in [103] (Nicholas J.) also presided in the Rokt case most recently decided by the Full Federal Court on this very topic. As such, it is difficult to imagine that the Full Court of the Federal Court would overturn the decision of Burley J. in this case. The Commissioner may therefore prefer to spare the expense of another appeal and simply bring the APO practice into line with the Federal Court’s direction of how patent-eligible subject matter should be assessed for CIIs. We shall watch developments with interest, but the writer now expects a clear shift in APO practice in favour of protection for innovations in the area of combined hardware / software systems. That would be good news for innovators indeed!

of physical parts. It is difficult to see why the development of an implementation of an EGM that utilises the efficiencies of electronics technology would be disqualified from patent eligibility, when the old- fashioned mechanical technology was not. Such an approach would be antithetical to the encouragement of invention and innovation. To adapt the analogy used in CCOM, a ball point pen that used computerised components to enable it to function more efficiently would be no less a manner of manufacture now than the original ball point pen was when it was first invented. Whether or not it is novel or involves an inventive step is, of course, for separate enquiry. Furthermore, in paragraph [103] of his judgement, Burley J. referred to another recent decision of the Federal Court in which his colleague, Nicholas J. similarly found that patent claims directed to an EGM also related to a ‘manner of manufacture’ (i.e. patent-eligible subject matter). In that other case, Nicholas J. concluded that the inventions in suit were not ‘mere ideas’ but were ‘new and useful gaming machines and new and useful methods of operation producing new and improved results ’. Interestingly, both the judge in this case, Burley J., and the judge referenced in [103] from the other recent case, Nicholas J., both presided in the Full Bench of the Federal Court in the recently decided case of the Commissioner of Patents v. Rokt Pte Ltd [2020] FCAFC 86 . The judge distinguished the Rokt case on the basis that the invention in that case concerned mere computer automation of an otherwise unpatentable method, whereas the ‘substance’ of the invention in the present case was not at all in that category. While the writer is not convinced that the judge’s reasoning in the earlier case was correct, the fact that the patents in the present case concerned a gaming machine, i.e. a piece of equipment with physical elements (display etc.) for sale and delivery as a product to a casino, surely made a decision in favour of patentable subject-matter easier in this case. In the Rokt case, by contrast, the judges were considering a method performed within a processor for creating an interaction of a user with advertising; i.e. less tangible with more of a sense of a ‘business operation’. Nevertheless, the Court could have agreed with the technical expert at first instance, who considered the invention in that case to be a technical solution to a technical problem. In any case, the Court has clearly rejected the APO practice of ‘prematurely discounting elements of the claim’ when assessing the ‘substance’ of the invention.

PATENT APPLICATIONS TO OVERCOME DELAYS IN EXAMINATION

The Engineering and ICT team at Wrays helps market- leaders protect their innovations in this technology area.

PHILIP GEHRIG Principal

Over the past few months if not years, applicants may have observed delays in the commencement of examination after filing their patent application in Australia. These delays do not appear to be COVID-19 related. Rather, they appear to be a function of ordinary business operations. Gaining patent protection in Australia may have positive benefits to the applicant’s overall patent strategy, and therefore, applicants may be interested in utilising one of two options to “fast-track” patent examination at IP Australia. These options are: (1) expedited examination; and (2) accelerated examination. EXPED I TED EXAMI NAT ION Examination of applications may be expedited where there are special circumstances requiring an expedited process (such as commercial reasons to receive grant). The cost of requesting expedited examination is the same as requesting standard examination. Where expedited examination is

requested, IP Australia will generally issue an examination report within 8 weeks. It is also possible to submit voluntary amendments to the claims at this time.

ACCELERATED EXAMINAT ION V IA THE GPPH Alternatively, examination may be accelerated through the Global Patent Prosecution Highway (GPPH) route, relying on an allowed or granted patent on a corresponding application in an approved country. The cost of requesting accelerated examination does not require an additional official fee. However, additional costs associated with the preparation of supporting documentation and proposed amendments to the claims will be incurred. IP Australia usually issues an examination report within 4 to 6 weeks. If you would like to have your application examined sooner rather than later, please contact your patent attorney at Wrays.

LINDA KENNAUGH Principal

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