HRB Innovations, Inc.

The applicant, HRB Innovations, Inc., sought a patent for a computer-implemented invention that involved the preparation of a tax return. The invention used cluster analysis to sort information and present a personalised tax interview for a tax return. The Commissioner of Patents, represented by Isaac Tan, objected to the patent application on the grounds that the invention did not constitute a manner of manufacture as required by section 45 of the relevant legislation. The dispute was heard by the Australian Patent Office.

The key legal issue before the court was whether the claimed invention constituted a manner of manufacture. This involved examining whether the invention resulted in an improvement in the functioning of the computer or merely required generic computer implementation. The court considered various factors, including the contribution of the invention, its practical and useful result, and whether it was normal to configure a computer interface in the claimed manner at the priority date.

The court found that the claimed invention did not result in an improvement in the functioning of the computer and was not a manner of manufacture. The substance of the invention related to a scheme of sorting information using cluster analysis, which did not improve the functioning of the computer. The court noted that the applicant had filed a divisional application with an identical description to the present application, and it was appropriate to refuse the present application in the public interest to avoid any uncertainty.

The court refused the patent application. The decision was based on the finding that the claimed invention did not constitute a manner of manufacture and there was nothing of substance in the specification as a whole which would overcome this finding. The applicant's submissions regarding the technical contribution of the invention were not sufficient to establish that it was a manner of manufacture. The court considered the relevant matters set down in Aristocrat and found that the invention did not satisfy the requirements for a manner of manufacture.