Procedural fairness moonshot sadly burns up in IP Australia’s atmosphere

Venkat Thandra; Ahmed Farouk Shaaban [2022] APO 65 is yet another manner of manufacture decision in relation to computer related inventions by IP Australia. You can probably guess the outcome, but of note is the approach taken to Hearings at IP Australia where they emanate from an Examiner Objection as well as the time to place the application in order for acceptance, once the hearing decision is handed down.

The applicant by way of its attorneys attempted a unique approach to secure more time to prosecute the case beyond the Hearing.

When it comes to contested manner of manufacture objections for computer implemented inventions before a Hearing Officer at IP Australia, things tend to go one of three ways:

  • The rare instance where the objection is dismissed and the application proceeds to acceptance;
  • the objection is upheld but the Hearing Officer thinks there’s a chance of patentable subject matter in the specification or claims and pushes the matter back down to examination and provides more time to address the issue. Again, this is rare; and
  • more commonly, the objection is upheld with no material in the specification to overcome the objection and the application is refused.

Perhaps anticipating outcome (3), the Applicant attempted to secure more time to prosecute the application, and address the objection irrespective of the outcome of the decision. It should also be noted that the applicant had to provide several submissions owing to the shifting practice of manner of manufacture in relation to computer implemented inventions over the last year or so.

The applicant argued that information at IP Australia assists examiners in performing their role with respect to how to apply the principles of manner of manufacture.

The delegate noted at [6] that:

 [the] “applicant suggests that attorneys have not had the benefit of this information. Irrespective of my assessment regarding the claims’ validity, the applicant requested that the application be returned to examination for at least a further six-month period in view of ‘greater insight’ from recent exchanges between IP Australia and the applicant’s attorney and to avoid ‘any possible procedural unfairness’.”

This line of argument was given short shrift by the Hearing Officer as not being necessary or appropriate because the reasoning for the objection had been communicated in earlier examination reports, and the applicant had been given an opportunity to be heard at the hearing.

While applicants can of course file a divisional application prior to requesting a hearing, in an attempt to preserve their position, this can be problematic if the parent application is completely rejected, which can impact the divisional.

This case highlights the difficulty of manner of manufacture issues and perhaps as a result the ingenuity required by applicants and their advocates in the way they present their arguments, amendments and submissions. Necessity really is the mother of invention.


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 for a leading automotive manufacturer.