Pairoj Suktarachan - [2025] APO 24

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Pairoj Suktarachan [2025] APO 24
Patent Application: 2020201206

Title:RogerRoj SocialScience BioInformatic WealthManagement FinancialServices Reformulation

Patent Applicant: Pairoj Suktarachan

Delegate:Dr S. J. Smith

Decision Date: 31 July 2025

Hearing Date: Written submissions filed on 5 June 2025

Catchwords: PATENTS – section 223 – extension of time to gain acceptance – whether failure to gain acceptance was due to an Office error – whether circumstances beyond control caused failure to gain acceptance – extension of time refused

Representation: Applicant was self-represented.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2020201206

Title:RogerRoj SocialScience BioInformatic WealthManagement FinancialServices Reformulation

Patent Applicant: Pairoj Suktarachan
Date of Decision: 31 July 2025
DECISION

The requirements for an extension of time to be granted under section 223(1) or section 223(2)(b) have not been met.
I refuse the application for an extension of time to gain acceptance.
REASONS FOR DECISION
Background

Patent application 2020201206 (the application) was filed by Pairoj Suktarachan (the applicant) on 19 February 2020. Following a request for expedited examination on 9 January 2024, a first examination report was issued on 25 January 2024. During the twelve-month examination period a further eight examination reports were issued. The ninth examination report was issued on 20 January 2025. The applicant filed responses on 25 and 26 January 2025, but there was insufficient time for an examiner to consider these before the application lapsed for failure to gain acceptance within the 12 month period provided (I note that because 25 January 2025 fell on a Saturday the final date for acceptance was 28 January 2025 pursuant to section 222A of the Patents Act 1990 (the Act)).
On 10 February 2025 the applicant requested an extension of time which I understand to be on the basis of either section 223(1) or section 223(2)(b), to allow the examiner more time to consider his response.
Following this request, on 17 March 2025, a tenth examination report was issued including objections indicating that amendments proposed to the specification are not allowable, and that the claimed invention is not patentable subject matter.
After a series of exchanges in which various Patent Office staff identified serious concerns with the request for extension and indicated an intention to refuse the request, the matter was set for hearing and on 5 June 2025 the applicant filed written submissions in support of the requests for extensions of time under sections 223(1) and 223(2)(b).
The law
Section 223 of the Act relevantly provides that:
(1)The Commissioner must extend the time for doing a relevant act that is required to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:
(a)the Commissioner or a Deputy Commissioner; or
(b)an employee; or …
(2)Where, because of:
(a)…; or
(b)circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
The concept of an “error or omission” has the same meaning in section 223(1) as it does in the more commonly discussed context of section 223(2)(a).[1] That is, it has a broad scope, and encompasses accidentals slips,[2] unexpected failures to exercise due diligence,[3] and breakdowns in procedure.[4]
[1] Jiejing Pty Ltd v Commissioner of Patents [1995] AATA 100 at [88].
[2] Kimberly-Clark Ltd v Commissioner of Patents (No 3) [1988] FCA 421 at [9].
[3] Total Peripherals Pty Ltd v Commissioner of Patents [1998] AATA 784 at [14].
[4] Oz Technology, Inc. v Boral Energy Ltd [1999] APO 18.
With respect to section 223(2)(b), Jenkinson J, albeit in the context of the Trade Marks Act, indicated that circumstances beyond control is essentially a force majeure provision:
“In the context in which it is found, the expression ‘circumstances beyond the control of the person concerned’ does in my opinion designate – and designates only – occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent. The operations of nature and the activities of strangers may result in such occurrences. So, too, may the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed. But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in paragraph 131(1)(a), in my opinion. Nor, in my opinion, are the acts or omissions of that agent’s servants. The section is, I think, correctly described as a force majeure provision.”[5]
[5] Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks [1987] FCA 22 at [18].
I note that in contrast to section 223(1), section 223(2) is a discretionary provision – even where there are relevant circumstances that enliven section 223(2)(b), it is necessary to consider whether the Commissioner’s discretion should be exercised. As the delegate in Guang-ming Weng said:
“…the Commissioner may extend the time. The Vangedal-Nielsen v Smith (Commissioner of Patents) decision, [1980] FCA 163, provided some factors for consideration in this regard. Of particular relevance to the present case is the public interest in the issue of a valid patent while also operating the patent system efficiently and without unreasonable delay. While the provisions of sub-section 223(2) are beneficial in nature, the discretion should not be exercised where, for example, it would serve no useful purpose.”[6]
[6] [2018] APO 69 at [16] (emphasis in original).
The meaning of the term “relevant act” is defined in subsection 223(11):
relevant act means an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such application.
As explained by the AAT, acceptance (rather than the filing of an examination response) is a relevant act:
“Acceptance is … an action or step required to be taken by the Commissioner if an application comes within sub-section 49(1) and provided section 51 is not applicable. It is also a relevant act within the meaning of sub-section 223(11) for it is an action in relation to a patent application and is not a ‘prescribed action’ within the meaning of sub-regulation 22.11(3).”[7]
[7] Jiejing Pty Ltd v Commissioner of Patents [1995] AATA 100 at [93].
Important to both sections 223(1) and 223(2)(b) is the requirement for a causal connection between the error by the Office or the circumstances beyond the control of the applicant and the relevant act (in this case acceptance) not being done in time. This means that errors or circumstances that occur after the final date for acceptance will not enliven section 223, because they cannot have caused the failure to gain acceptance.
The specification
The specification as filed is a relatively succinct document. For convenience, a copy of the specification is annexed to this decision. The invention is said to be used “for Wealth Management and Financial Services Reformulation” and the applicant explained the invention (in the context of responding to examination reports) as follows:
“My invention is a methods and processes of how to Improve social on health, environment and finance offering technical detail that discloses a technical improvement and advantage to social and finance, which is patentable.
There are four different types of activities, one or all of which may be used to process as credit for purchasing goods and services, through a system called ‘devotion credit’. My invention can be used to make society awareness of options that is obvious and tangible which can solve the problems of the world today, include economic problems, society, crime, war, premature death, the global warming problem, by making the choice of using Devotion Credit Reward System for individual to exchange for goods and services instead of using money.
Information from biofeedback, salary calculators, anthropogenic impact on the environment and communities data will be used to processed as credit to purchase goods and services. A credit calculation or to determine incentives for individual motivation to perform activities that best help environment and society are ways of analyzing reward distributions. The using of computers and artificial intelligence that focuses on combining the above 3 data and calculating them to measure the economic value of various goods and services in the form of DEVOTION CREDIT REWARD SYSTEMS and calculating exchange rates to other currencies, processed as credit to be used to purchase goods and services.”[8]
“My invention is about restructuring and organizing in a more efficient and effective manner helping people: as individuals, communities and societies; their behaviours and interactions with each other and with their built, technological and natural environments using information from biofeedback (include neurofeedback) to managing wealth and assets in a way that maximizes growth and minimizes risk and at the same time facilitating transactions for businesses, individuals and governments.”[9]
[8] Applicant’s correspondence of 18 February 2024.
[9] Applicant’s correspondence of 26 January 2025.
The specification as filed does not include conventional claims. New claims, as set out below, were included in amendments proposed on 18 June 2024:
Claim 1. The using of biofeedback information for the purpose of Social Science Bio-Informatics Wealth Management Financial Services Reformulation. There are four different types of activities, one or all of which may be used within the following overall process to form Devotion credit which hold current or potential monetary value for purchasing goods and services
- The using of any biofeedback information collected of biofeedback data from bodily functions including brain wave activity, electrical activity of the brain, blood flow, muscle tension, body temperature, sweat volume, pulse and heart rate using biofeedback devices to measure physical or mental health, and transformed the data to the form of Devotion credit which hold current or potential monetary value to be used to purchase goods and services.
- The using of any salary information benefits and other factors include salary records for available jobs by name, government, company, employer, employee, career field, location, experience, education, special skills, cost of living, , and transformed the data to the form of Devotion credit which hold current or potential monetary value to be used to purchase goods and services.
- The using of information of any human activities that have an impact on the environment and communities, and transformed the data to the form of Devotion credit which hold current or potential monetary value to be used to purchase goods and services.
- The using of computers and artificial intelligence that focuses on combining the above 3 data and a) calculating them to measure the economic value in the form of Devotion credit which hold current or potential monetary value for purchasing goods and services and b) calculating exchange rates to other currencies.
Claim 2. Biofeedback information on how an individual, group of people or whole group of people feel and interact from the Devotion credit they received.
Claim 3. The ways of analyzing reward distributions of Devotion credit calculation by transform biofeedback, employment related, anthropogenic impact on the environment and communities data to determine incentives for individual motivation to perform activities that best help environment and society. An intermediary and/or party that provided goods or services or non-credit rewards such as discounts, private offices, housing, benefits, and different perquisites for the Devotion credit be the one who analyzing reward distributions of Devotion credit which depend on their availability of product or service or times, financial situation, a preplanned course of action establishing a guide to work toward acceptable outcomes and objectives(policy or plan), health and environment concerns, skill, knowledge, and a reasonable assessment of the adequacy of enablement(activity based on the facts that are available with moral and legal obligation), supply and demand associate with the value amount of Devotion credit that someone is willing to pay in the market. Each case is unique, each case has to be considered on its own facts and merits; and judgments of the intermediary and/or party that provided goods or services or non-credit rewards for the Devotion credit.
Devotion credit is the credit arrangement directly between 2 parties or more or with the assistance of an intermediary that when one party perform activities that best help himself and society on health, environment another party will exchange goods or services or non-credit rewards such as discounts, private offices, housing, benefits, and different perquisites for the Devotion credit.
Claim 4. The using of “biofeedback” as a new technique wherein a person is provided with feedback about the physiological functions of their mind in order to improve their ability to control mind functions to the physiological changes that often occur in conjunction with changes to thoughts, emotions, and behavior for purpose of Social Science Biolnformatic Wealth Management and Financial Services Reformulation.
I understand the invention to be essentially an alternative to current/conventional currency, whereby value is assigned by reference to factors including biofeedback and environmental impact.
Basis for extension of time
The applicant identified several circumstances as supportive of the request for an extension of time:
(i)reliance on IP Australia’s advice (to file an extension of time) impacted by system changes regarding the issuance of post-lapsing examination reports – this is said to support an extension under both sections 223(1) and 223(2)(b);
(ii)the final date for acceptance falling on a weekend, followed by a public holiday, limiting the practical ability to act – this is said to be relevant to section 223(2)(b);
(iii)examination history – I understand this to be in relation to both the report content, and some reports issuing outside of IP Australia’s timeliness targets, which I understand to be potentially relevant to both sections 223(1) and 223(2)(b).
I will address each of these in turn.
Reliance on IP Australia’s advice and subsequent events
The letter advising that the application lapsed for failure to gain acceptance, sent on 5 February 2025, includes the following statement:
If you wish to reinstate your standard patent application – apply for an extension of time (under section 223 of the Patents Act 1990) and file a response to overcome outstanding objections to gain acceptance.
I take it from the applicant’s submissions that he understood this to be advice to seek an extension of time:
“On 5 February 2025, IP Australia advised reinstatement via an extension of time (EOT) and filing of a response to objections. The applicant complied by submitting the EOT request on 10 February 2025.”
I note here that the information in the lapsing notice must be understood in the context of the section 223 requirements; it is necessary that the lapsing be due to one of the circumstances that enlivens section 223 for this option to be successfully pursued.
In written submissions the applicant stated:
“The applicant acted promptly on IP Australia’s guidance (5 February 2025) to file the EOT. Any procedural oversight or miscommunication regarding system limitations constitutes an ‘error/omission’ by the Commissioner’s delegate.”
I understand the relevant system limitations here to relate to the issuing of a tenth examination report after the application had lapsed, the circumstances of which the applicant discussed in detail in a letter received 3 March 2025:
“He [the examiner] advised me on 14 February 2025 that his intention for the application was to issue an examination report several weeks after the case had lapsed. Unfortunately, he later discovered that the system at IP Australia has changed to mean that this is no longer possible. He wasn’t aware of this at the time, so he apologise for that. This means that currently he is not able to issue a report. (a report issued after a case has lapsed is essentially a formality; for instance, it would not be possible for him to accept the application after it has lapsed, even if it was appropriate to do so.)”
The applicant also referred to a failure to communicate changes in process regarding post-lapse reports to stakeholders.
As noted previously, a tenth examination report ultimately was issued. However, even if any confusion or uncertainty around the process for the issuance of such a report could be considered an error by the Commissioner’s delegate, or a circumstance beyond the applicant’s control, it cannot have been causal of the failure to gain acceptance because it did not arise until the application had already lapsed. As such, the circumstances surrounding the issuance of the tenth examination report do not enliven section 223.
Date of final date for acceptance
The applicant indicated that the final date for acceptance falling on the weekend, and being followed by a public holiday, provided “[limited] practical ability to act.”
It is true that the date the first report issued, and consequently the final date for acceptance, are not within the control of the applicant, and that the final date for acceptance fell on a weekend followed by a public holiday (although pursuant to section 222A the period for gaining acceptance did not end until the following day on which the Office was open). However, this is not a matter which is causal of the failure to gain acceptance. The applicant availed of numerous opportunities to file examination responses in an effort to gain acceptance. That the final of these was immediately before the final date for acceptance such that the examiner did not have time to consider the response is not a circumstance beyond the control, in the sense of force majeure, of the applicant. It is a case of running out of time to gain acceptance. In any event, it is apparent that the examiner was not satisfied that the final examination response placed the application in order for acceptance based on the content of the tenth examination report. As such, this was not causal of the failure to gain acceptance and does not provide a basis for an extension of time under section 223.
Compliance with timeliness target
The applicant notes that seventh, eighth and ninth examination reports were issued outside of the 20 working day examination timeliness target.[10] In the written submissions, this is said to demonstrate “consistent complexity requiring additional time”. In correspondence of 11 April 2025, the applicant said that this delay “directly cause[d] the failure to meet the deadline and is the circumstances beyond my control”.
[10] The Patent Manual of Practice and Procedure at 3.2 indicates that the patent examination target for responses to examination reports is “85% sent within 20 working days from receiving the correspondence”.
As to the question of complexity, it is clear that the prosecution of this application has been challenging – the issuance of nine examination reports during the examination period is highly unusual. However, as I will discuss in more detail below, this is a function of the nature of the invention. It is not a force majeure.

In any event, even if the delay in response were to be considered a circumstance beyond the control of the applicant enlivening section 223(2)(b), or an error by the office enlivening section 223(1), I do not consider that it is causal of the failure to gain acceptance. That is, while regrettable, despite the delays in the issuing of a number of examination reports, there were evidently many opportunities for the applicant to file examination responses during the twelve-month examination period. The examination reports issued indicated on many occasions that the prospects of gaining acceptance were remote, and post-lapsing the examiner indicated that outstanding objections to the application remained. As such, delays during the examination process were not causal of the failure to gain acceptance in this case.
Report content
The applicant points to “systemic errors” in the examination of the application that are said to support an extension of time. Specifically, the applicant submitted that:
“The applicant has overcome prior objections (patentable subject matter, Section 40, novelty, inventive step). Outstanding objections in Report No. 9 (amendments, patentable subject matter) are resolvable with proper review.”
I first note that, contrary to the applicant’s submission, prior objections were not overcome. Rather, consideration of these objections was suspended pending resolution of the objection regarding the allowability of amendments. Where amendments result in claims to new matter, examiners are not required to examine those claims – this is because there is no purpose in examining claims that cannot be allowed. Despite this usual approach, I understand the examiner to have included the patentable subject matter objection in the latest reports to make it clear that amendments could not overcome the objections to the specification.
In any event, I understand the applicant’s position to be that the outstanding objections are wrongly taken and that the application in its current form is in order for acceptance, given that no amendments to the specification were filed with the responses to the ninth examination report. The applicant has identified specific concerns with the final two examination reports, which both raise objections regarding the allowability of amendments proposed to the specification and manner of manufacture.
In short, having reviewed the reports and the application, I am satisfied that the examiner’s objections are consistent with the guidance set out in the Patent Manual of Practice and Procedure, which reflects practices, procedures and principles to be followed by examiners that have been established with regard to the relevant authorities. There is no causal error by an employee apparent, and accordingly section 223(1) is not enlivened. Nevertheless, I think it is useful in this case to consider the objections and the applicant’s comments in relation to them in some detail.
Turning first to manner of manufacture, it is a requirement of paragraph 18(1)(a) of the Act that an invention be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. The classic question to be asked when deciding whether an invention is a “manner of manufacture” is set out in the decision of the High Court in National Research Development Corporation v Commissioner of Patents:[11]
“The right question is: ‘Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?’”[12]
[11] [1959] HCA 67; 102 CLR 252 (‘NRDC’).
[12] NRDC at 269, [14].
The High Court went on to explain that:
“a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art ... that its value to the country is in the field of economic endeavour.”[13]
and
“Sufficient authority has been cited to show that the ‘something’ need not be a ‘thing’ in the sense of an article; it may be any physical phenomenon in which the effect, be it creation or merely alteration, may be observed…”[14]
[13] NRDC at 275, [22].
[14] NRDC at 276, [23].
However, the High Court has made clear that there is no precise formulation to be applied unthinkingly; a case-by-case methodology is to be undertaken,[15] in which regard is had to the substance of the claimed invention, not simply its form. As Gageler and Nettle JJ succinctly put it in Myriad:
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”[16]
[15] D’Arcy v Myriad Genetics Inc [2015] HCA 35; 258 CLR 334 at [23] (‘Myriad’).
[16] Myriad at [144].
Abstract ideas – business, commercial and financial schemes as such – have never been considered patentable.[17] In Grant the Court quoted Sir Robert Finlay A-G in Re Cooper’s Application for a Patent[18]: “[y]ou cannot have a Patent for a mere scheme or plan – a plan for becoming rich; a plan for better government of a State; a plan for the efficient conduct of a business”.[19] Conversely, a patentable invention may be found where there is a technical contribution.[20] In considering the question of manner of manufacture it is necessary to distinguish between a technological innovation, which is patentable, and a business innovation, which is not.[21] With respect to whether a physical effect is required, the Court in Grant said:
“A physical effect in the sense of a concrete effect of phenomenon or manifestation or transformation is required. In NRDC, an artificial effect was physically created on the land. In Catuity and CCOM as in State Street and AT&T, there was a component that was physically affected or a change in state or information in a part of a machine. These can all be regarded as physical effects. By contrast, the alleged invention is a mere scheme, an abstract idea, mere intellectual information, which has never been held to be patentable, despite the existence of such schemes over many years of the development of the principles that apply to manner of manufacture. There is no physical consequence at all.”[22]
[17] Grant v Commissioner of Patents [2006] FCAFC 120 at [14]-[16] (‘Grant’).
[18] (1901) 19 RPC 53 at 54.
[19] Grant at [14].
[20] Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 at [99] (‘RPL Central’), Research AffiliatesLLC v Commissioner of Patents [2014] FCAFC 150 at [114] (‘Research Affiliates’).
[21] Grant at [24], Research Affiliates at [94].
[22] Grant at [32].
Where an invention involves the implementation of a scheme via computer technology, it is necessary to understand whether there is invention in the computer implementation:
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to ‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well-known and understood functions.”[23]
[23] RPL Central at [96].
In Encompass Corporation Pty Ltd v InfoTrack Pty Ltd, regarding a method and apparatus for displaying information to provide business intelligence, the Court also discussed computer implementation of a scheme:
“…the appellants sought to make much of the fact (if it be a fact) that the claimed method cannot be implemented using ‘generic software’. The difficulty with this submission is that the claims in suit do not secure, as an essential feature of the invention, any particular software or programming that would carry out the method. It is left entirely to those wishing to use the method to devise, and then to implement, a suitable computer program for that purpose. As we have said, all that the specification teaches is that the processing system by ‘suitable programmed’.
…the appellants submitted that the claimed method is, itself, a high-level description of a computer program. We do not accept this characterisation. If approached from this point of view, the method is really an idea for a computer program, it being left (as we have said) to the user to carry out that idea in an electronic processing device. … Patentable subject matter is not provided simply because the method is a ‘method … in an electronic processing device’, which itself is not characterised. To find otherwise would be to elevate form over substance.”[24]
[24] [2019] FCAFC 161 at [100]-[101] (‘Encompass’).
The examiner’s objection in the ninth and tenth examination reports is essentially that the invention is not a technical innovation, but is “a financial scheme in which various data is used to measure economic value in the form of devotion credit, which holds monetary value.” “[P]roviding an incentive, in the form of devotion credit, to encourage people to behave or act in certain ways” is said to be not a technical solution to problems resulting from the current monetary system.
The applicant asserted various errors in the final two examination reports which I have summarised below:
Ninth examination report
·Misinterpretation of manner of manufacture: An invention must create an artificially created state of affairs that has economic utility. The examiner’s error is conflation of the non-financial incentive system of the invention with narrow financial incentives. “The invention constitutes a ‘human-designed systemic framework’ that alters behavioral dynamics indirectly through bioinformatic algorithms’, and is a manner of manufacture as set out in NRDC.”
·Incorrect threshold for technical improvement: The NRDC test of artificially created state of affairs with economic utility does not impose a rigid technical improvement requirement. The examiner’s error is demanding a computer science improvement and ignoring the technical contribution made by the invention in biotechnology (biofeedback-driven algorithms for bias mitigation) and social technology.
·Overlooking patentability of social science innovations: The examiner’s error is failing to fully recognise the technical merit of the integration of neuroeconomic algorithms and ethical frameworks in addressing system challenges rooted in monetary systems. “Their combined application offers a novel approach to resolving deeply entrenched structural issues, suggesting a potential oversight in evaluating their interconnected utility.”
Tenth examination report
·Misapplication of “artificially created state of affairs”: The examiner’s error is incorrectly equating the non-monetary incentive mechanism for health/environmental behaviour with financial schemes, which contradicts the specification’s distinction between intrinsic motivation and monetary rewards.
·Ignoring technical character in biotechnology: Innovations in biotechnology are patentable if they involve a technical effect. The examiners error is disregarding the integration of biofeedback devices and neuroeconomic algorithms to improve health outcomes, which is a technical advance in data processing and behavioural prediction.
In addition to identifying these errors, in criticising the examiner’s approach the applicant pointed to the “reliance on selective analysis of the specification (e.g., omitting interdisciplinary technical context such as neuroeconomic frameworks and bioinformatics integration” in the post-lapsing examination report which “violates established examination practices requiring ‘holistic assessment of technical contributions’.” The applicant stated that the analysis “ignored integration with bioinformatic systems” and focused “narrowly on isolated technical elements”, thereby deviating from procedural norms requiring “comprehensive review of all technical effects and contextual innovations”. The applicant also noted that by addressing societal harms caused by the current monetary system, the invention is aligned with the goal of the Act.
I understand the applicant’s position to be that, as a non-monetary incentive mechanism, the invention is not a financial scheme, although noting that claim 1 (filed on 18 June 2024) provides for the calculation of an exchange rate to “other currencies” this seems a dubious distinction. Instead, the applicant characterises the invention as an incentive mechanism embedded in a bioinformatic framework, with a technical implementation that improves bias detection in neuroeconomic systems. Ultimately, the question is not whether the invention may be characterised as a financial scheme or not, but whether it is for a manner of manufacture.
An invention which is, in substance, a scheme or plan, without more, is not patentable; it does not give rise to the requisite artificially created state of affairs of economic significance. I accept the applicant’s submission that it is necessary to understand the invention holistically. However, in the present case, having reviewed the specification and as discussed below, I agree with the examiner that the invention is not for a manner of manufacture. It is in substance a scheme for the attribution of incentives to individuals; it does not provide a patentable artificial effect – no physical consequence results from the invention. This is akin to the non-patentability of systems of government and plans for the conduct of a business. The alteration of behavioural dynamics, while it may be beneficial to society and an admirable pursuit, is not, in my opinion, a patentable effect within the meaning of NRDC and Grant.
While the applicant referred to the integration of biofeedback devices and neuroeconomic algorithms to improve health outcomes, the specification as filed does not disclose how such a result is to be achieved. At best, there is what is described in Encompass as an idea, the implementation of which is left to the skilled addressee. The specification as proposed to be amended does include more detail/examples regarding the invention, including information about how and what physiological parameters can be measured. However, no technical advance is described or claimed – simply including data obtained via technical measures within the context of a scheme does not transform the character of the invention. Accordingly, while I agree with the applicant that a technical contribution in the field of computer science is not necessary (and not described), I cannot agree that a technical contribution in biotechnology or social technology has been described.
It may be that the integration of neuroeconomic algorithms and ethical frameworks to address issues associated with the current monetary system, or the integration of biofeedback devices with neuroeconomic algorithms to improve health outcomes, would involve a technical contribution and an associated patentable artificial effect. However, such a contribution is not apparent given the degree of abstraction or generality at which the invention is described, both in the specification as filed and as proposed to be amended.
Accordingly, I do not consider that the matters identified by the applicant are errors, and certainly not errors causal of the failure to gain acceptance. I also note that RPL Central Pty Ltd v Commissioner of Patents[25], which the applicant referred to as aligning “more closely with societal applications requiring technical implementation”, and in which patentability of a computer-implemented system for competency assessments was upheld, was overturned by the Full Court on appeal.
[25] [2013] FCA 871.
I am satisfied that the invention described does not provide a patentable artificial effect. It follows that the manner of manufacture objections were appropriately raised throughout the examination of this application. Moreover, this objection is such that, as noted on multiple occasions, there is no prospect of the application being accepted – the specification as filed reveals nothing that could satisfy the manner of manufacture requirement. This means that there is no allowable amendment that could be made to the specification that would overcome this objection.
In view of the above, it is unnecessary to consider the allowability of the amendments in detail. However, the specification as proposed to be amended as at the ninth examination report is 18 pages long. Noting the brevity of the original specification, it is apparent that a significant amount of text has been added. Given that the test for added subject matter at section 102(1) of the Act is “strict” and “a patent applicant is not permitted to add by amendment matter simply because it would have been obvious to the skilled person”,[26] prima facie this expansion of the specification is troubling. The examiner has focused on specific added text which is said to expand the definition of “biofeedback” beyond what the skilled person would have understood in view of the specification as filed.
[26] Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [2020] FCA 328 at [215]-[216].
The applicant submitted that the specification as amended, viewed through the lens of the skilled addressee when properly characterised (as a neuroeconomics expert), does not include new matter:
“The amendments do not introduce new matter. A person skilled in the art (PSA) in ‘neuroeconomics and bioinformatics’–fields integral to interpreting the invention–would derive no new insights beyond the original specification.”
I cannot agree with the applicant. Certainly the specification must be understood from the perspective of the person skilled in the relevant art, but this does not provide licence to add new contextual information regarding an invention simply because that information may have been obvious to the relevant skilled person. The material referenced by the examiner, regarding positive and negative biofeedback in the economy, particularly with respect to share trading behaviour, is not clearly and unambiguously disclosed in the application as filed – biofeedback in the context of the share market is not mentioned at all. Even if this would be obvious to the skilled person in view of the disclosure, that is not the relevant test; it is not part of the original disclosure and such matter cannot be added.
The issues raised by the applicant regarding the content of the examination reports do not establish a basis for an extension of time under either section 223(1) or 223(2)(b).
Discretion
Given that the provisions for allowance of an extension of time are not enlivened there is no need to consider the exercise of discretion. For completeness, even if circumstances beyond the applicant’s control were established, I consider that it would be inappropriate to exercise the discretion to grant an extension of time. I acknowledge the applicant’s submissions regarding engaging with the examiner (“[t]he applicant proactively submitted draft responses (26 January 2025) and sought clarification on objections…”), and there is nothing in the applicant’s conduct itself that would warrant an adverse exercise of discretion. However, as I noted above, the objections to the application are such that there are no prospects of it being accepted. In these circumstances an extension of time in order to gain acceptance would serve no useful purpose and therefore I would not have exercised the discretion to extend the time.
Conclusion

I will refuse the application for extension of time. The ultimate cause of the failure to gain acceptance is the existence of insurmountable objections to the application. This is not grounds for an extension of time under either section 223(1) or section 223(2)(b).
Dr S. J. Smith
Delegate of the Commissioner of Patents
Annex: Specification filed in compliance with formality direction of 20 February 2020