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As a follow up to my blog last week, I promised to give my opinion on how best to present your invention to pass the subject matter test.

As mentioned last time, In Australia, the principles set out in a 2015 High Court decision (D’Arcy v Myriad Genetics Inc [2015] HCA 35 “the Myriad decision”) have been used as a basis by the Australian Patent Office to instruct that Australian patent examiners consider the following questions:

  1. What is the substance of the claim?
  2. Has the substance of the claim been “made” or changed by man?
  3. Does the invention have economic utility?
  4. Does the invention as claimed represent a new class of claim?

The most important question of all of these is the first question and to answer that question, Australian patent examiners are instructed to identify the underlying invention, rather than merely relying on the form of the invention claimed.

In all of the objections raised by Examiners relating to subject matter that I have seen to date, the Examiners have outlined what they consider to be the “substance” of the invention. Once they make that contention, the remainder of the objection is made relatively straightforward for them and they present the objection logically.

However, it pays to remember that the objection is ultimately based on what the Examiner has decided is the substance of the claim. It is in the definition or clarification of what is the substance of the claim, that an applicant can get back the advantage in the subject matter issue.

In my opinion, the key to answering an objection raised that your invention is not patentable subject matter, is in controlling the determination of the substance of the invention.

There are a number of times at which the issue of the substance of the invention is important. Perhaps the 2 most important times is when your initial application is drafted and if an objection is raised

When drafting your application (and when you review it), your attorney should describe the invention in a way that allows you to focus on what the substance of the invention actually is.  That way, when the examiner says later that “the substance of your invention is XXX” if that is not actually the substance of the invention, you can point to portions of your invention description in your patent application to support your position as to what the substance of your invention actually is.

As mentioned above, the other time when it is important to control the determination of the substance of the invention is during examination, particularly when an objection is raised because the examiner will quite often make a contention as to what the substance of the invention is which may or may not be correct. If an examiner contends that the substance is one thing when the substance of your invention is actually something different, you and your attorney should be robust and explaining to the examiner why the substance of the invention that they have identified is not actually the substance of the invention. Gaining control of this particular portion of the examination process is vital for success in overcoming subject matter objection.

To provide an example based on an actual case*, your invention is directed towards an improvement in a gaming machine which presents an interface on a touchscreen and interface includes a number of different games that can be played in each of the game identifiers, a series of electronic touchscreen buttons are provided indicating the amount that can be wagered in that particular game.

The Examiner then objects along the lines of:

Claims 1-26 do not define a manner of manufacture within the meaning of s 18(1)(a) of the Patents Act 1990.

Having regard to the context of the specification as a whole and the relevant common general knowledge, the substance of the invention are games characterised by rules for the progress of game play and the utility of the invention lies merely in the possibility of more interesting game play. The contribution of the invention is not technical in nature.

The arrangement of the claimed interface is merely part of the computer acting as the intermediary to carry out the method without adding anything to the substance of the invention of rules for the progress of game play.

It is clear that the Commissioner must consider the substance of what is claimed and this is not altered merely by computer implementation even if described as a gaming machine. Something further is required.

As you can see, the examiner characterised the substance of the invention as games characterised by rules for the progress of game play.

The Applicant in that case was ultimately successful in establishing that the substance of the invention was “new interface through which a player may interact with the gaming machine and provides a mechanism for reducing the number of steps required to begin playing a game on a gaming machine”.

The specification gave some support to this position.

Based on the success in reframing what was considered to be the substance of the invention, the applicant was actually successful in overcoming the manner of manufacture objection. In particular, they could argue that the substance of the invention complied with the rules, but only once they had actually reframed the substance of the invention.

A good attorney who works with inventions which are likely to draw subject matter objections should be very capable of including enough statements in the patent specification when it is drafted which allow applicants to focus on what they consider to be the substance of the invention in order to move the argument over subject matter in their favour.

If you and your attorney cannot answer your question as to what is the substance of the invention, then it is unlikely that you are going to be successful in overcoming a subject matter objection if it is raised.

*Aristocrat Technologies Australia Pty Limited [2016] APO 49
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