The FOXTEL decision is a positive one for inventors seeking to protect computer implemented inventions, as it shows that the APO is not unwilling to characterise computer related inventions as technological innovations, rather than mere schemes.
The Australian Patent Office (APO) recently issued its first patentable subject matter decision post-RPL, being FOXTEL Management Pty Ltd v British Broadcasting Corporation  APO 19 (“the FOXTEL decision”), finding that a system for providing access to broadcast content on a scheduled basis was a manner of manufacture for the purposes of s18(1)(a) of the Patents Act (1990). In particular, it was found that the substance of the invention related to a technological innovation, rather than a scheme or business method, and accordingly, that the claims were directed toward patentable subject matter.
The FOXTEL decision relates to a patent application filed by the British Broadcasting Corporation (“the BBC application”), which relates to a system for providing users access to audio and visual content on a scheduled basis. The system allows a user to download content prior to a scheduled broadcast time, but the downloaded content is made available for access only after the scheduled broadcast time of the content.
Claim 1 of the BBC patent recites:
Independent claims 8, 10 and 16 respectively relate to a user interface, method and electronic program guide having features substantially the same as those recited in claim 1.
FOXTEL filed an opposition to the application on a number of grounds, including that the claims of the application were not directed toward a manner of manufacture. In particular, FOXTEL appear to have adopted the European problem-solution approach for assessing inventive step as a test for manner of manufacture. FOXTEL argued that the distinguishing features of the claimed invention over the prior art, or the alleged substance of the invention, resided in setting the time at which the content could be accessed. FOXTEL alleged that since setting the time does not provide a technical contribution to the art, the claims of the application were not directed toward a manner of manufacture. FOXTEL further alleged that no part of the substance of the invention lay in the computer implementation. Based on this, it was argued that the claims did not define a patentable invention.
BBC referred to the two-step test for determining patentability outlined in RPL, namely first determining whether the substance of the invention is a technological or a business innovation, and secondly, if the invention is a business innovation, determining whether there is a threshold degree of inventiveness in the manner by which the innovation is implemented by computer technology. BBC submitted that it was clear from the specification that the described invention provided a technical solution to a technological problem, and so it satisfied the first test, and therefore the claims related to patentable subject matter. BBC further submitted that even if the substance of the invention was considered to be a business innovation, the claims relate to a technical implementation of the innovation, so they passed the second step of the RPL test.
The Delegate found that FOXTEL was incorrect in attempting to determine the substance of the invention via an analysis of the inventive step, stating that this approach was “misconceived and unsustainable”. Instead, the Delegate confirmed that manner of manufacture and inventive step are two distinct requirements of the Patents Act, and should not be confused.
The Delegate agreed with the BBC’s application of the two-step test outlined in RPL, and found that the substance of the claimed invention was in providing broadcast content to a plurality of users via download, such that the users could only access the content after to a scheduled broadcast time of the content. This was considered to be a technological innovation, rather than a business innovation, and so the decision was distinguished from the RPL decision.
As the Delegate considered that the substance of the invention was not a business innovation, it was not found necessary to consider whether the claims had the threshold degree of inventiveness in the implementation of the business innovation by computer technology. However, based on previous Court decisions, it seems that the claimed features of “ordering means for enabling a user to order the download of said content”, “downloading means for downloading said content” and “access means for enabling a user to access said downloaded content” do not significantly depart from the sorts of features that have been previously characterised as “generic computing steps” that would not have satisfied the requisite threshold degree of inventiveness.
While the decision does not enlighten us as to the degree of inventiveness required to satisfy the second step of the RPL test, it does provide further guidance as to the type of subject matter that may be considered to be more than a mere scheme. It appears that even if an invention recites fairly generic computing steps, it is still possible to satisfy the requirements of manner of manufacture if the substance of the invention is technical, rather than being related to a business innovation.
Being an APO decision, the FOXTEL decision is not binding on the Courts. However, this decision is likely to be persuasive to patent Examiners, as well as other Delegates’ decisions on patentable subject matter in future APO hearings.