Amazon invention a mere business solution and not patentable

Date: 16 February 2021
Forum: Australian Patent Office
Delegate: Kevin Restrick

Background

Under Australian law, business methods are not patent eligible because they are not considered to be a “manner of manufacture”. However, inventions that may resemble business methods, but that rely in both a technical intervention and a technical innovation to solve a problem may meet the requirements for patentability. Australian Patent Application 2018204629 (Application), in the name of Amazon Technologies, was the subject of a hearing after the Application and its parent application, failed to reach acceptance following six examination reports in which objections for manner of manufacture had been raised.

The claimed invention of the Application related to the field of computer resource virtualization and allowed various computing resources to be efficiently and securely shared by multiple customers. Prior to the hearing, the Examiner had maintained that the claimed invention did not involve any technical invention or ingenuity and that the technical aspects of the invention were achieved using generic computer functionalities.

Key Issues

In making his assessment, the Delegate carefully considered the substance of the invention based on the principles set out by the Delegate in Aristocrat Technologies Australia Pty Ltd.¹

Specifically, the Delegate focused on identifying the problem to be solved, whether said problem was technical in nature, and whether the solution relied on a technical improvement to known computing technology.

The Delegate determined that the problem sought to be overcome was the efficient use of fixed computing resources when the client has unpredictable demands. The solution lay in the computing resources provider offering a level of service for the customer with what in essence was a ‘payment plan’ or a ‘service level agreement’, where the customer was provided with a guaranteed minimum level of service as well as “burst performance” should they have accumulated sufficient resource credits from previous time periods.

When considering any technical processes involved in the solution provided, the Delegate noted that the invention was not reliant on any optimised algorithm, artificial intelligence or advanced critical path analysis function and found that there was no improvement in computing hardware or architecture.

In contrast, the applicant argued that the problem of “how to” provide the solution was actually a technical problem, and that the solution “brought together a combination of new and known elements to form a working combination that had not previously been achieved, involving the use of computers in a way foreign to their normal use”.

Outcome

The Delegate considered that the problem to be solved by the invention was something that is a “core tenet” of business, namely, avoiding underutilised assets, reinforcing the notion that the problem to be solved was a business problem. He also found that the solution was defined by established business rules.

The Delegate also considered that the applicant’s arguments with regard to the proposed technical effect of the invention would only apply in a very particular and niche situation, and he regarded most other scenarios where the invention might be applied as not achieving a useful result.

The Delegate added that on the rare occasions the useful result was achieved, this was largely dependent on a business decision being made by the customer.

As such the invention related to a business problem rather than a technical problem, and the substance of the invention amounted to “nothing more than a scheme for scheduling work and is therefore not for a manner of manufacture”. In terms of how the work was scheduled, the Delegate stated that there is “no technical innovation in how tasks are scheduled; they are scheduled based on business rules only”.

Implications

This decision is a reminder to patent applicants that it may not be sufficient to merely claim a technical effect achieved by an invention in limited scenarios, and that it is also important to establish that the problem to be solved is a technical one. While there may be cases where an invention is patentable by virtue of a business problem being solved with a technical solution,² it is preferable that both the problem and solution be technical in nature.

1. [2016] APO 49
2. See, for example, Advanced New Technologies Co., Ltd [2021] APO 29