Manner of Manufacture: Coarse patent filter becomes quite the grind

IP Australia have recently revised their Manual of Practice and Procedure (known as the Patent Examiners Manual) relating to Manner of Manufacture.  The revisions specifically relate to  Manner of Manufacture as it applies to computer related inventions. These revisions were made in light of the recent Rokt and Aristocrat judgments, although as at the time of writing both of those judgments are under appeal to the High Court and Full Federal Court respectively.

The Patent Examiners manual is intended for use by Examiners and Applicants to quickly and easily identify and understand the application of the Australian Patents Act 1990. On 26 August 2020 the following sections were revised:

2.9.2.1 Legal Principles

2.9.2.7 Computer Implemented Inventions – Schemes and Business Methods

2.9.2.9 Gaming and Gaming Machines

The changes largely explain away the Aristocrat judgment as being fact specific (i.e. the gaming machine being of specific construction, implementing a particular game being patentable) in what appears to be a measure to dissuade patent applicants from latching onto the reasoning in that judgment where they have an objection under Manner of Manufacture.

For many years the Manner of Manufacture test was thought of as coarse filter to weed out inventions which are clearly non-patentable subject matter. Over the last 12 years, the test has become a grind. The sections on Manner of Manufacture now run to over 6000 words which only goes to highlight the difficulties and uncertainty IP Australia and applicants face when dealing with patentability of computer implemented inventions.

BCSE(Hons) MIP FIPTA

Mark’s academic background is in computer science and electrical engineering. He assists clients in obtaining and enforcing their intellectual property rights in the areas of software, electronics and engineering. Prior to joining Phillips Ormonde Fitzpatrick, Mark worked with a major Australian car manufacturer within their Current and Past Model Engineering group.