7.15.2 Substituting computerised decisions

Also in this Chapter:

• 7.15.1 Power to Make Computerised Decisions
• ​​​​​​​7.15.3 Existing Computerised Decisions

Key Legislation:

Patents Act:

• s216 Exercise of discretionary power by Commissioner  
• s223A Computerised decision-making  

The Commissioner has discretion to substitute a decision made by the operation of a computer program under her control. Sec 223A (3) allows the Commissioner to correct or vary computer implemented decisions where that decision was incorrect.

A substituted decision also includes overriding, modifying, rectifying, withdrawing, rescinding, replacing or in any way varying the original decision. Normally it will involve setting aside the original decision and making an alternate decision. The effect of substituting a decision is as if the original decision was never made.

The substitution of a decision is only possible where the original decision was incorrect. An incorrect decision could arise where the computer program failed to take account of relevant matters or took account of irrelevant matters. An incorrect decision could also be determined if the outcome of the program is unreasonable.

The substitution of a decision is a discretion, so it will not happen automatically once the decision is found to be incorrect. For instance, if an applicant does not act promptly once they realise a decision was incorrect, that may count against substituting the decision. Further, if people have acted in reliance on a decision it might be inappropriate to substitute a decision.  For example, it would normally be inappropriate to substitute a decision to request examination after an application has been accepted.

Consideration of whether to substitute a decision must be determined by, or in consultation with, Patent Oppositions.

Internal review of whether to substitute a decision can be initiated by the applicant or the Commissioner. Review will start with the presumption that the decision is correct, and an applicant will need to explain why the computerised decision was not correct. It will not be sufficient for an applicant to merely question whether the decision was correct. Where the Commissioner detects that the computer program has malfunctioned based on the rules of the programming, or the data input into the system, the data may be re-entered into the program, or checked manually to identify whether there was an error. In this case the results of the investigation will be forwarded to Patent Oppositions for internal review.

Where internal review of a decision could adversely affect a person, sec 216 requires the Commissioner to give them a reasonable opportunity to be heard. Patent Oppositions will be responsible for ensuring procedural fairness.