Commonwealth Scientific and Industrial Research Organisation

The case involves the Commonwealth Scientific and Industrial Research Organisation (CSIRO) and concerns the patentability of an invention related to smart contracts in blockchain technology. The dispute was heard in the Australian Patent Office. The primary legal issues addressed by the court were whether the invention constituted a manner of manufacture and whether it involved an inventive step.

The court found that the invention, which involves the generation and presentation of information relating to a process by converting nominal process data into an encrypted numerical representation, was indeed a manner of manufacture. The court emphasised that the invention's use of blockchain platforms to perform mathematical computations on process data constituted a technical solution. Furthermore, the court determined that the invention did not merely involve the generation and arrangement of intellectual information but rather yielded a practical and useful result in monitoring process operations without revealing confidential information.

Regarding the inventive step, the court considered whether the invention would have been obvious to a person skilled in the art given the prior art. The examiner had raised objections based on a cited prior art document, but the court concluded that the invention could not be arrived at as a matter of routine from the cited prior art alone. The court also considered the possibility of the existence of better prior art and found that the application should be referred back to examination for further investigation. This determination was based on the balance of considerations, which favoured finding that the claimed invention involved an inventive step.

The court's final orders were to dismiss the examiner's objections regarding the manner of manufacture, while the inventive step objection was upheld, and the application was referred back for further investigation.