First Principles, Inc. - [2011] APO 1

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

First Principles, Inc. [2011] APO 1

Patent Application 2007221889

Title:Rational inquiry method

Patent Applicant: First Principles, Inc.

Delegate: P M Spann - Deputy Commissioner of Patents

Decision Date: 5 January 2011

Hearing Date: Heard by written submission

Catchwords: PATENTS – examiner’s objections –method of psychological analysis and therapy - whether a manner of manufacture – change in emotional state not a “physical phenomenon or effect” – method solely concerns human interactions and behaviours within the fine rather than useful arts – proposed amendments not allowable – no patentable subject matter disclosed – application refused.

Representation: Patent applicant: Mr J Arrouk, patent attorney, Pizzeys, Canberra

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2007221889

Title:Rational inquiry method

Patent Applicant: First Principles, Inc.

Date of Decision: 5 January 2011

DECISION

Patent application 2007221889 is refused pursuant to subsection 49(2) of the Act.

REASONS FOR DECISION

This matter concerns examiner’s objections in respect of the application and whether I should exercise the Commissioner’s power to refuse the application under subsection 49(2) of the Patents Act 1990.

Background

Keith Raniere on 5 September 2000 filed international application PCT/US00/40818 in relation to a “Rational inquiry method”. This application claimed priority from US application 09/654,423 filed on 1 September 2000 and, pursuant to section 88, proceeded in Australia as complete application number 2001213650. After the application entered the national phase it was assigned to First Principles, Inc. and was subject to three adverse examination reports maintaining, ultimately, an objection on the basis of lack of novelty. Acceptance of the application was not obtained in the prescribed period and the application lapsed. However this was not before the present application was filed as a divisional application on 9 October 2007.

The present application has been subject to three adverse examination reports with the most recent maintaining objections of lack of clarity, that the claims are not directed to a manner of manufacture and that they do not involve an inventive step. The applicant in turn has filed a number of submissions and proposed amendments in response. In addition to the grounds already mentioned, the examiner in the last report further finds that the amendments proposed in the second statement of proposed amendments are not allowable. Submissions on the matters raised by the examiner and a third statement of proposed amendments were filed for my consideration on 20 December 2010. The final date for acceptance of the application is 5 March 2011.

The patent specification

The subject matter of the application is said to relate to educational methods for personal improvement and more specifically for detecting and removing “disintegrations”. These according to the specification include “ineffective non-transcendent emotions”. By removing disintegrations a person’s personal effectiveness is said to be improved.

More specifically, according to the alleged invention disintegrations can be removed or integration encouraged by a method of rational enquiry. The specification indicates that this:

“includes a plurality of questions, methods and observations leading to answers, meanings, ethics, personal essence, purpose and a…

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: First Principles, Inc. [2011] APO 1
Case: [2011] APO 1
Decision Date: 5 January 2011

CaseChat Overview and Summary

First Principles, Inc. sought to patent a "rational inquiry method" intended for personal improvement through the detection and removal of "disintegrations", which include "ineffective non-transcendent emotions". The Australian Patent Office rejected the application on several grounds, including the contention that the method did not meet the statutory requirements for patentability as a "manner of manufacture". The applicant argued that the method's effect on the emotional and physiological state of the subject constituted a "physical phenomenon or effect". However, the Deputy Commissioner of Patents found that this was not the kind of physical effect contemplated by the relevant case law, which requires a "concrete, tangible, physical, or observable effect". The court concluded that the method was merely a process of psychological analysis and therapy and did not involve any artificially created state of affairs within the meaning of the statute. The court further found that the proposed amendments to the claims did not address this issue and were not allowable under the Act. Consequently, the application was refused.

The central legal issue in this case was whether the claimed method met the statutory requirement of being a "manner of manufacture". The applicant argued that the method's effect on the emotional and physiological state of the subject constituted a "physical phenomenon or effect". However, the court found that this was not the kind of physical effect contemplated by the relevant case law, which requires a "concrete, tangible, physical, or observable effect". The court concluded that the method was merely a process of psychological analysis and therapy and did not involve any artificially created state of affairs within the meaning of the statute. The court further found that the proposed amendments to the claims did not address this issue and were not allowable under the Act. Consequently, the application was refused.

The Deputy Commissioner of Patents, P M Spann, found that the claims were not directed to a manner of manufacture and that no patentable subject matter was disclosed in the specification. The Commissioner concluded that the application should be refused pursuant to subsection 49(2) of the Patents Act 1990. The court found that the proposed amendments to the claims did not address the fundamental issue of the method's lack of patentable subject matter and were not allowable under the Act. The Commissioner refused the application, and the applicant has the right to appeal this decision to the Federal Court of Australia.

In summary, the court found that the claimed method did not meet the statutory requirement of being a "manner of manufacture" and that no patentable subject matter was disclosed in the specification. The proposed amendments to the claims did not address this fundamental issue and were not allowable under the Act. Consequently, the application was refused. The applicant has the right to appeal this decision to the Federal Court of Australia.

Orders