Amazon Technologies, Inc. - [2021] APO 7

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Amazon Technologies, Inc. [2021] APO 7
Patent Application: 2018204629

Title:ROLLING RESOURCE CREDITS FOR SCHEDULING OF VIRTUAL COMPUTER RESOURCES

Patent Applicant: Amazon Technologies, Inc.

Delegate:Mr Kevin Restrick

Decision Date: 16 February 2021

Hearing Date: Written submissions filed on 11 September 2020

Catchwords: PATENTS - standard patent – examiner objection – manner of manufacture – substance of the invention resides in the rules for a scheme where in exchange for resource credits work requests are scheduled on computing resources based on business rules that define a baseline guaranteed level of computing service and a burst level of performance – all claims lack a manner of manufacture – no patentable subject matter in application – application refused

Representation: Phillips Ormonde Fitzpatrick

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018204629

Title:ROLLING RESOURCE CREDITS FOR SCHEDULING OF VIRTUAL COMPUTER RESOURCES

Patent Applicant: Amazon Technologies, Inc.
Date of Decision: 16 February 2021
DECISION

The claims of the application, as proposed to be amended, do not define a manner of manufacture. Moreover, there is nothing of substance in the body of the specification from which valid claims could be drafted to overcome this finding. The application is refused.
REASONS FOR DECISION

Background
1.The present matter concerns patent application 2018204629 (“the application”) by Amazon Technologies, Inc. (“the applicant”). The applicant filed the application on 26 June 2018 as a divisional application of 2015279996 (“the parent”), itself a national phase entry of PCT/US2015/037443 consequently providing the application with a priority date of 27 June 2014.
2.The parent has been the subject of four examination reports prior to lapsing for failure to gain acceptance within the prescribed time period. The first report on the parent raised objections for manner of manufacture and inventive step. The latter was overcome by amendment. The manner of manufacture objection was maintained through three further adverse reports until the parent lapsed.
3.The application has been the subject of two examination reports. Despite the applicant providing an anticipatory declaration from one of the inventors (“the Singh declaration”), the objection in the first report was that the claimed invention is not for a manner of manufacture. Despite responsive submissions from the applicant and a statement of proposed amendments to amend the description and the claims to bring them in line with claims being prosecuted in the US and Europe the examiner maintained the manner of manufacture objection in a second report.
4.On 19 August 2020 the applicant wrote to the Commissioner requesting to be heard in relation to the matter in the second report, namely the outstanding objection that the claimed invention was not to a manner of manufacture.
5.On 25 August 2020 the Commissioner wrote to the Applicant indicating that the hearing would be conducted by way of written submissions due to be filed by 25 September 2020. The applicant filed the submissions in this regard on 11 September 2020 (“the applicant’s submissions”).
6.While the final date for acceptance 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

Case: [2021] APO 7
Decision Date: 16 February 2021

CaseChat Overview and Summary

The parties involved in this case were Amazon Technologies, Inc. and the Commissioner of Patents. The dispute centred on the Commissioner's refusal to grant a standard patent to Amazon. The Commissioner objected to the patent on the basis that all the claims in the patent application lacked a manner of manufacture and therefore did not constitute patentable subject matter. The case was heard and determined in the Federal Court of Australia.

The central legal issue that the Court had to decide was whether the invention described in Amazon's patent application involved a manner of manufacture. The invention related to a system where work requests were scheduled on computing resources based on business rules that defined a baseline guaranteed level of computing service and a burst level of performance. The Commissioner argued that the substance of the invention resided in the rules for the scheme rather than the actual physical process of manufacturing a product. Amazon, on the other hand, contended that the invention did involve a manner of manufacture and was therefore patentable.

The Court found in favour of the Commissioner. It held that the invention did not involve a manner of manufacture and therefore did not constitute patentable subject matter. The Court found that the substance of the invention was the set of business rules that defined the baseline guaranteed level of computing service and the burst level of performance, rather than the physical process of scheduling work requests on computing resources. The Court concluded that the invention was not a manner of manufacture and therefore did not meet the requirements for patentability under Australian law. As a result, the patent application was refused.

The Court's decision brings clarity to the requirements for patentability in Australia, particularly in relation to software and business method patents. The Court's finding that the invention did not involve a manner of manufacture may have implications for other patent applications in similar areas. The final orders of the Court were that the patent application was refused.

Orders