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Accenture Global Solutions Limited

Accenture Global Solutions Limited

Case [2022] APO 8 10 February 2022

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Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Accenture Global Solutions Limited [2022] APO 8

Patent Application: 2019268056
Title:Artificial intelligence and machine learning based incident management

Patent Applicant:                   Accenture Global Solutions Limited
Delegate:  Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date:  10 February 2022
Hearing Date:  Written submissions completed 28 January 2022

Catchwords: PATENTS – section 45 – examiner’s objection – using machine learning and artificial intelligence for incident management based on requirements and priority for completion of tasks – invention in substance directed to a mere scheme – alleged invention not a manner of manufacture – application refused

Representation: Patent attorneys for the applicant: Murray Trento & Associates Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019268056
Title:Artificial intelligence and machine learning based incident management

Patent Applicant: Accenture Global Solutions Limited
Date of Decision: 10 February 2022
DECISION
The claims of the application, as proposed to be amended, do not define a manner of manufacture. I do not see any subject matter of substance in the body of the specification from which valid claims could be drafted to overcome this finding.

I refuse the application.
REASONS FOR DECISION
BACKGROUND

Accenture Global Solutions Limited (“the applicant”) filed patent application 2019268056 on 18 November 2019 as a convention application based on US filing 16/232881. Examination was requested on the same day, and the application was subjected to four examination reports, the final of which issued on 8 July 2021. In each of those reports, the examiner maintained an objection that the claims do not define a manner of manufacture, considering the claims novel and inventive in all reports. The applicant requested to be heard on 9 July 2021.
The examination of the present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”) as the application was filed after 15 April 2013. Thus, the standard of proof that applies in the present case is the balance of probabilities (subsection 49(1)). I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
The final date for acceptance of the application was 10 July 2021, however paragraph 13.4(1)(g) of the Patent Regulations 1991 is available to extend the time for gaining acceptance to 3 months (or longer if appropriate under sub-regulation 13.4(3)) from the date of the present decision.
SPECIFICATION
The alleged invention relates to techniques for managing incidents such as work events for an organisation. In paragraph [0001] of the specification it is noted that incidents may be managed based on requirements set forth with respect to priority of completion or availability of personnel. The specification then follows with consistory statements for the claimed invention and a brief listing of the figures. At [0028] of the specification there begins an overview of the nature of the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Accenture Global Solutions Limited [2022] APO 8
Case: [2022] APO 8
Decision Date: 10 February 2022

CaseChat Overview and Summary

In the case of Accenture Global Solutions Limited, the Federal Court of Australia considered the patentability of a method of managing incidents based on requirements and priority for completion of tasks, which incorporated machine learning and artificial intelligence. The patent application was objected to by the examiner, who argued that the invention in substance was directed to a mere scheme, and not a manner of manufacture. The applicant sought a review of the examiner's decision, arguing that the invention was patentable subject matter and met the requirements of section 45 of the Patents Act 1990 (Cth).

The primary legal issue for the court to decide was whether the invention was a manner of manufacture, and therefore patentable, or whether it was a mere scheme or mental process, which is excluded from patentability. The court needed to determine whether the invention involved a physical or mechanical process, or if it was a purely intellectual process. The court also needed to consider whether the use of machine learning and artificial intelligence in the invention changed the nature of the invention and made it patentable.

The court held that the invention was not a manner of manufacture, as it was not directed to a physical or mechanical process, but rather a method of managing incidents based on requirements and priority for completion of tasks. The court found that the invention was a mere scheme or mental process, as it did not involve any physical or mechanical transformation of materials or any physical application of a principle. The use of machine learning and artificial intelligence did not change the nature of the invention, as it was still a method of managing incidents based on requirements and priority for completion of tasks. The court held that the invention was not patentable subject matter under section 45 of the Patents Act 1990 (Cth), and the application was refused.

The court's decision in this case highlights the importance of ensuring that patent applications clearly identify the physical or mechanical process involved in the invention, and that the use of machine learning and artificial intelligence does not necessarily make an invention patentable. It is important for patent applicants to carefully consider the nature of their invention and ensure that it meets the requirements of section 45 of the Patents Act 1990 (Cth) before filing a patent application.

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