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Modified Date: 02 October 2018 Principles for Examination

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There is no simple test to determine whether or not a claimed invention is a manner of manufacture.  The principles that have been laid down in decided cases provide guidance that must be applied on a case by case basis.

The following provides a general overview of the approach to the examination of manner of manufacture.  Examiners should also consult those parts of 2.9.2 Patentable Subject Matter (Manner of Manufacture) dealing with specific subject matter for more detailed assistance.


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Examination Practice

The assessment of whether an application defines patent eligible subject matter is considered with respect to each claim.

In general, the principles set out in D'Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad), Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL) and other cases suggest that examiners can approach the examination of manner of manufacture in a way similar to that formulated by UK authority in Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7 (Aerotel) as follows:

  1. Construe the claim.
  2. Identify the substance of the claim (what is the alleged or actual contribution?)

  3. Ask whether the substance of the claim lies within established principles of what does not constitute a patentable invention (e.g. is it merely a scheme, plan, rules of gameplay, intellectual or genetic information?)

  4. If not, consider whether the substance otherwise lies outside of existing concepts of manner of manufacture and is to be treated as a “new class” of subject matter.  (This leg of the approach will only be used in rare situations; see Is the Claim for a “New Class” of Subject Matter? below).

The approach of looking at the contribution, “inventiveness or ingenuity”, for the purpose of determining whether a claimed invention is a manner of manufacture, is not the same as a determination of whether a claimed invention is lacking novelty or an inventive step under sec 18(b).  Manner of manufacture is an assessment of the substance of the invention, whereas obviousness and novelty are assessed by consideration of the subject matter of the claim.  An invention may not be obvious under sec 18(b) but, in substance, lie in excluded subject matter under the separate requirement for a manner of manufacture.  

Put another way, manner of manufacture assesses whether the contribution of the invention is directed to the “type” or “nature” of subject matter that should attract patent protection, whereas novelty and inventive step assess whether the contribution is “significant enough” or “whether the degree of contribution sufficiently advances the art” when compared to the prior art.  Similar understanding has been applied by UK authority in Lantana Limited v The Comptroller General of Patents, Design and Trade Marks [2014] EWCA Civ 1463 (Lantana), where it was noted by Kitchin L.J that:

“There is no inconsistency between an acceptance that an invention embodied in a claim is new and inventive and a finding that the contribution it makes falls solely within excluded subject matter.  The former requires a consideration of the claimed invention and an assessment of whether it forms part of the state of the art or is merely an obvious step.  The latter requires consideration of whether the contribution made by the invention falls solely within one or more of the exceptions to patentability.”


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Construe the Claim

The normal rules of construction apply when determining the scope of a claim for this purpose (see 2.11.2 Construction of Specifications).  Examiners should however be very careful in considering broad or indefinite terms, or adopting constructions suggested by the applicant that pre-empt a determination of the substance of the invention, for example, by taking an unduly broad or narrow construction of the claim.


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Identify the Substance of the Claim

In order to determine the substance, examiners must identify the central underlying invention embodied in the claim, rather than merely consider the literal form of the claim.  This is the contribution the claimed invention makes to the art and is determined based on a reading of the specification as a whole and examiners’ understanding of the common general knowledge and prior art.

Relevant factors to consider when identifying the substance of the claimed invention include:

In addition to the Myriad and RPL decisions, the UK authorities following Aerotel (see for example HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451) provide useful guidance in identifying the substance, or, in other words, identifying the alleged or actual contribution of a claimed invention for this purpose.  Jacob L.J. stated in Aerotel:

“43  The second step—identify the contribution—is said to be more problematical.  How do you assess the contribution?  Mr Birss submits the test is workable—it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are.  What has the inventor really added to human knowledge perhaps best sums up the exercise.  The formulation involves looking at substance not form—which is surely what the legislator intended.

44  Mr Birss added the words ‘or alleged contribution’ in his formulation of the second step.  That will do at the application stage—where the Office must generally perforce accept what the inventor says is his contribution.  It cannot actually be conclusive, however.  If an inventor claims a computer when programmed with his new program, it will not assist him if he alleges wrongly that he has invented the computer itself, even if he specifies all the detailed elements of a computer in his claim.  In the end the test must be what contribution has actually been made, not what the inventor says he has made.”

Consequently while examiners can take into account what the specification asserts is the contribution made by the invention, and can even make an assessment by way of consideration of the common general knowledge, the substance is to be determined on an objective rather than subjective basis. In order to do this, consideration should be given to the claimed invention and the contribution that it makes to the art.  Logically this consideration may take into account the prior art at the priority date rather than merely common general knowledge.  In this regard, any finding in relation to manner of manufacture is independent of the particular drafting of the specification in question, and is not affected by the failure of a specification to discuss a particular piece of art that may alter an assessment of patentability on the face of the specification alone.

While consideration can be given to individual prior art publications when assessing patentability, examiners can also simply rely on their own knowledge and are not required to do additional searching to establish the state of the art for this purpose. Such an approach was taken in RPL, where their honours took into account “well-known search and processing functions of a computer”.  Care must be taken not to determine the substance of the claimed invention merely on the basis of excluding known features in the claims, as the substance of the claim may lie in the particular combination of integers.

As indicated by Kitchen L.J. in Lantana:

“64  I accept Mr Beresford's submission that it is the claim as a whole which must be considered when assessing the contribution which the invention has made, and that it is not permissible simply to cut the claim into pieces and then consider those pieces separately and without regard to the way they interact with each other.  Thus in Symbian Ltd v Comptroller-General of Patents [2008] EWCA Civ 1066, [2009] RPC 1, Lord Neuberger (giving the judgment of the court) said at [37] (referring to decision T 0208/84 Vicom Systems Inc/Computer related invention [1987] OJ EPO 14, [1987] 2 EPOR 74 at [37]):

‘Finally at [16] the Board described “making a distinction between embodiments of the same invention carried out in hardware or in software” as “inappropriate”, as what is decisive is “the technical contribution which the invention described in the claim when considered as a whole makes to the known art”.’

A useful way of approaching this issue in the context of computer related inventions, particularly when dealing with claims involving physical system architecture, is to consider which features of the claim confer novelty over the prior art.  For example, where the system architecture is known apart from the particular program that is operating, the substance of the claim will generally be the program and not the system.  On the other hand, where the claim is directed to a novel architecture it is sometimes helpful to ask whether the individual integers are known in the art, and/or whether the combination of the integers gives rise to a new physical computer system/device that does more than merely automate a process.  If the system includes conventional computer hardware used in its normal way, it is unlikely that the conventional hardware forms part of the substance.  In considering the substance of a claimed invention it will often not matter in what form the invention is claimed.  The substance can be the same whether claimed as a product, method or system.  However, each case needs to be considered on its particular facts.  For example, if the substance of a claim is a mere discovery, another claim directed to an application of that discovery may be in substance a patentable invention (see Discoveries, Ideas, Scientific Theories, Schemes and Plans).  

Care should also be taken that words invoking a particular technical context do not unduly influence the assessment of the claimed invention’s substance.  In other words, claims that define detailed technical features may mask the true nature of the invention.

An analysis of the substance of the invention in this way is consistent with the approach taken by the Court in RPL and its reasoning in the following paragraphs:

“110.  RPL Central does not claim any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method.  Accordingly, the ingenuity of the inventors must be in the steps of the method itself.  The method does utilise the speed and processing power and ability of a computer but there is no suggestion that this is other than a standard operation of generic computers with generic software to implement a business method.  This is the method of taking the information as to available criteria for Units of Competency and reframing those criteria into questions and presenting them to, and receiving the answers from, the user together with any documents that the user wishes to append.  The reframing of the criteria into questions may be outside the generic use of a computer but the idea of presenting questions, by reframing the criteria, is that: an idea.  It is not suggested that the implementation of this idea formed part of the invention.  Indeed, no instruction as to such programming is provided in the specification other than the idea of turning the performance criteria provided by the NTIS into a question by prepending or otherwise inserting a form of words.

111.  The problem may be one of confronting the ‘maze’ of available information concerning the RPL of different Units of Competency in different institutions, but the solution to that problem, to be patentable, must involve more than the utilisation of the well-known search and processing functions of a computer, for example an invention in the way in which the computer is utilised.

112  Recognising that the claims are to a method and system comprising a combination of integers, it is necessary to understand where the inventiveness or ingenuity is said to lie.  Turning to the integers of the invention as set out at [36] and [38] and summarised at [37] and [39] above, it is apparent that, other than the integers providing that the computer processes the criteria to generate corresponding questions and presents those questions to the user, the method does not include any steps that are outside the normal use of a computer.  It is not suggested that the creation of the plurality of assessable criteria themselves form the basis of the claimed invention.  They are present on the NTIS website from which they are retrieved.  It is not suggested that the presentation of the questions or the processing of the user’s responses involve ingenuity themselves or that this constitutes the requisite manner of manufacture.”


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Is the Substance of the Claim Patentable in View of Established Principles?

In most cases where the issue arises, the substance of a claimed invention can be assessed against existing concepts of manner of manufacture that have been developed through case law.  Consequently the question will normally be whether the substance of the invention falls within an established category of ineligible subject matter (for example, the fine arts, discoveries, or schemes).  If so, then the invention does not relate to patent eligible subject matter.  How the assessment made is dependent on the particular exclusion and specific guidance is provided in 2.9.2 (Patentable Subject Matter) Manner of Manufacture.


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Is the Claim for a “New Class” of Subject Matter?

If the substance of a claimed invention appears not to fall within established concepts of manner of manufacture and does not fall within established exceptions, it is considered to be a “new class” requiring special consideration as set out in Myriad at [28].

To decide whether a claim relates to a “new class”, the relevant consideration is whether the Courts have previously dealt with subject matter of that type and whether that subject matter has been excluded in the context of manner of manufacture.

In general, the Courts have indicated that, subject to other requirements and aside from particular exceptions, patents are available for products, methods of making and using products and methods that otherwise result in a new and useful effect.  Technical subject matter that has been previously considered by Courts without rejection includes:

Where it is apparent that the substance of the invention lies in a new class of subject matter that is outside the established categories of patent eligible inventions, examiners should discuss the matter with their supervising examiner and Patent Oppositions to determine the approach to be taken.


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Objecting to Manner of Manufacture, Novelty and Inventive Step

Key points (see below for further explanations):

1. When there is clearly no patentable subject matter in a specification, examiners should consider reserving opinion on novelty and inventive step.

2.  A manner of manufacture objection does not need to be taken merely because a claim is not novel/not inventive.  These are separate considerations.

3.  In exceptional circumstances, examiners can reserve opinion on manner of manufacture if discerning the substance of the claimed invention is impractical.


Where the invention claimed is clearly not in respect of a manner of manufacture and it is not readily apparent what subject matter might reasonably be expected to be claimed, examiners should consider whether it is appropriate to restrict their report, e.g. with respect to novelty and inventive step  (see 2.1.4A Restriction of the Extent of the Report).

A common sense approach should apply to situations where the substance of a claimed invention clearly falls within the realm of patentable subject matter, but claim(s) are either plainly not novel or not inventive.  In such a situation a manner of manufacture objection will not be relevant.  

In cases where a claim is not novel or clearly not inventive, the way in which the novelty and/or inventive step objection could potentially be overcome may be important to a conclusive determination of manner of manufacture.  The following approach is reasonable:

Where a novelty or inventive step objection provides more detailed information, it is acceptable for examiners to focus an objection as to a lack of manner of manufacture simply upon those features that comprise the substance of the invention without particular regard to other features of the claim that lie outside of the alleged contribution.

Examiners should not avoid a consideration of manner of manufacture simply because a novelty/inventive step objection is in place.


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Australian Precedential Relationship with Principles of Aerotel

The approach to assessing the substance of the invention as guided by Aerotel, whereby the substance of the invention is considered to be the alleged or actual contribution to the prior art, resonates with Virginia-Carolina Chemical Corp's Application [1958] RPC at page 37, lines 11-13, where Lloyd-Jacob J stated:

“In considering whether or not an application discloses a patentable invention, it is proper that attention should be directed to the alleged contribution to the art rather than the form of the words tentatively put forward as defining the invention.”

Assessing patentability in this way is not inconsistent with the law articulated by the High Court in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449 which provides for a threshold requirement that an “alleged” invention must possess the necessary quality of inventiveness, i.e. be an “alleged invention”, on the face of the specification.  Here, their honours in majority said that if the threshold is not met, then “one need go no further”.


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