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HRB Innovations, Inc.

HRB Innovations, Inc.

Case [2018] APO 63 14 September 2018

Patent Infringement

Patentability

Substantive Review of Patents

Computer Implemented Inventions

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
HRB Innovations, Inc. [2018] APO 63

Patent Application: 2018200942

Title:Simplified tax interview

Patent Applicant:                   HRB Innovations, Inc.
Delegate:  Isaac Tan
Decision Date:  14 September 2018
Hearing Date:  Written Submissions filed 20 July 2018

Catchwords: PATENTS – section 45 – examiner objection hearing – manner of manufacture – computer implemented invention – preparation of a tax return – substance of the invention relates to a scheme of sorting information – use of cluster analysis – invention does not result in improvement in the functioning of the computer – application refused

Representation: Charles Yip, Patent Attorney of FB Rice Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018200942

Title:Simplified tax interview

Patent Applicant: HRB Innovations, Inc.
Date of Decision: 14 September 2018
DECISION
I find that the claimed invention is not for a manner of manufacture.
I direct that the application be refused.
REASONS FOR DECISION
Background

HRB Innovations, Inc. (applicant) filed patent application 2018200942 (application) on 8 February 2018. The application is a divisional of 2016201095, and claims a priority date of 24 February 2015.
On 6 April 2018, the Applicant requested full examination. The request was accompanied with a statement of proposed amendments to the description and claims. On 24 April 2018, before an examination report had been issued, the Applicant requested to be heard. As this is an unusual situation, a delegate of the Commissioner contacted the Applicant to advise that an examination report will first be issued before commencing the process for a hearing.
A first examination report (examination report) was issued on 16 May 2018. On 24 May 2018, the Applicant was invited to provide written submissions by 20 July 2018.
The Applicant’s submissions were filed on 20 July 2018, and are accompanied with further proposed amendments to the description and claims of the specification.
The specification
The invention relates generally to accurately predicting the information that is necessary and relevant for the purpose of determining the relevant questions for a tax interview for a given user such that a computer system presents only those relevant portions of the tax interview to the user without presenting the full tax interview.
As background, the specification states that:[1]
Traditionally, preparing a tax return by or on behalf of a taxpayer has been a laborious task. Because the same basic return (with minor variations) serves for all taxpayers, it must necessarily be comprehensive to address the various sources of income, deductions, and credits that any taxpayer might claim.
Technological approaches to preparing tax returns have ordinarily involved merely presenting tax returns that were traditionally done on paper in much the same way on a computer. However, this approach means that there is little advantage to using a computer because the tax return process remains just as burdensome to a user. These computer based approaches to tax interviews further assume that the tax interview cannot be customized for the user, which is a significant limitation of the prior art.

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.

Continue reading HRB Innovations, Inc.

Details

AGLC: HRB Innovations, Inc. [2018] APO 63
Case: [2018] APO 63
Decision Date: 14 September 2018

CaseChat Overview and Summary

In the matter of HRB Innovations, Inc., the applicant sought a patent for a computer-implemented invention related to the preparation of a tax return. The dispute involved the patentability of the invention under section 45 of the relevant legislation, specifically regarding the manner of manufacture. The Federal Court of Australia was tasked with deciding whether the invention was patentable.

The primary legal issue before the court was whether the invention involved a scheme of sorting information using cluster analysis, which was considered an abstract idea and not patentable subject matter. The court also needed to determine if the invention resulted in an improvement in the functioning of the computer, as required by the legislation. The applicant argued that the invention involved a novel and non-obvious method of sorting information, while the examiner contended that it was merely a computer program and not a patentable invention.

The court held that the invention did not involve a scheme of sorting information that was patentable subject matter. The court found that the substance of the invention related to an abstract idea, which did not result in an improvement in the functioning of the computer. Consequently, the court upheld the examiner's objection and refused the patent application. The court held that the invention was essentially a computer program and not a patentable invention under section 45 of the legislation.

The court's decision was based on the principle that computer programs are not patentable unless they result in an improvement in the functioning of the computer. The court found that the invention did not meet this requirement, as it did not improve the computer's functioning beyond the standard capabilities of a computer. The court's decision highlights the importance of distinguishing between patentable subject matter and non-patentable computer programs in the context of computer-implemented inventions.

Orders