Repipe Pty Ltd
[2018] APO 42
•28 June 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Repipe Pty Ltd [2018] APO 42
Patent:2017100560 and 2017100943
Title:Methods and Systems for Providing and Receiving Information for Risk Management in the Field
Patentee: Repipe Pty Ltd
Delegate: Xavier Gisz
Decision Date: 28 June 2018
Hearing Date: 10 April 2018, in Melbourne
Catchwords: PATENTS - The invention is a system for risk assessment – examiner’s objection – claims are not for a manner of manufacture – no patentable subject matter present – patents revoked
Representation: Counsel: Benjamin Fitzpatrick
Patent attorney: Rohan James Wallace, IP Sentinels
Other: Jaqueline Outram, Inventor and CEO of Patentee
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2017100560 and 2017100943
Title:Methods and Systems for Providing and Receiving Information for Risk Management in the Field
Patentee: Repipe Pty Ltd
Date of Decision: 28 June 2018
DECISION
The invention claimed in all of the claims of both 2017100560 and 2017100943 is not a manner of manufacture. Having reviewed the specifications, I do not consider it appropriate to provide an opportunity to amend as it will serve no useful purpose. The patents are revoked.
REASONS FOR DECISION
Background
Innovation patent number 2017100560 was filed on 17 May 2017. The 560 Patent claims divisional status from international patent application PCT/AU2016/050179 (published as WO 2016/141442). The earliest priority date of the 560 Patent is 12 March 2015.
Innovation patent number 2017100943 was filed on 10 July 2017. The 943 Patent claims divisional status from international patent application PCT/AU2016/050179. The earliest priority date of the 943 Patent is 12 March 2015.
The Request for Examination of the 560 Patent was filed on 17 May 2017 and granted on 1 June 2017. Following three adverse examination reports the patentee requested to be heard on 2 February 2018.
The Request for Examination of the 943 Patent was filed on 10 July 2017 and granted on 20 July 2017. Following three adverse examination reports the patentee requested to be heard on 7 March 2018.
The matter was heard at the Melbourne office of IP Australia on 10 April 2018.
APPLICABLE LAW
The patents have filing dates of 17 May 2017 (for 2017100560) and 10 July 2017 (for 2017100943). As a consequence, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patents.
Thus the standard of proof that applies in the present case is the balance of probabilities. I must certify the patent if satisfied on the balance of probabilities that the patent complies with the Act. If I am not so satisfied, then I can revoke the patent.
Section 18 of the Patents Act 1990 provides that:-
(1A) Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies;
Manner of Manufacture
Case law
In National Research Development Corporation v Commissioner of Patents [1959] HCA 67, (1959) 102 CLR 252, the High Court provided a statement of the law in respect to manner of manufacture. At page 275, “… 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”. In discussing the “vendible product” proposition put forward by Morton J in Re G.E.C’s Application, (1942) 60 RPC 1, the High Court in NRDC upheld the validity of a patent for the use of previously unknown properties of a known chemical to effect a new purpose. At page 277:
“The effect produced by the appellant’s method exhibits the two essential qualities upon which ‘product’ and ‘vendible’ seem designed to insist. It is a ‘product’ because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage … for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits.”
The High Court though was not laying down a precise formulation that can be applied unthinkingly. In D’Arcy v Myriad Genetics Inc [2015] HCA 35, at [23]:
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim. The point was made succinctly in the Myriad case by Gageler and Nettle JJ. At [144]:
“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.”
In Research Affiliates LLC v Commissioner of Patents [2013] FCA 71 Emmett J, in seeking to apply the NRDC test, stated at [22] that (with my emphasis in bold):
“For a method to be patentable, it must produce a product in which a new and useful effect may be observed. In the case of computer programs, it is necessary to look to the application of the program to produce a practical and useful result, so that more than mere information is involved. The method of a claimed invention will not be patentable if it does not produce an artificial state of affairs, in the sense of a concrete, tangible, physical or observable effect. Even if there is not a physically observable end result, in the sense of a tangible product, a claimed invention that is a method may nevertheless be patentable if it applies the method in a physical device. In such a case, an artificial state of affairs is produced in the physical device by the claimed method. Thus, a physical effect, in the sense of a concrete effect or phenomenon or manifestation or transformation, is required. It is sufficient if there is a component that was physically affected or a change in state or information in part of a machine. They can be regarded as physical effects. However, if the claimed invention is a mere scheme, an abstract idea or mere information, it will not be patentable as there is no physical consequence (Grant v Commissioner of Patents (2006) 154 FCR 62 at 70-71).”
In Grant v Commissioner of Patents [2006] FCAFC 120; 154 FCR 62 Justices Heerey, Kiefel and Bennet stated at [29] and [30] (with my emphasis in bold):
“NRDC emphasised the need for the adaptability of the law of patents to cover technological developments. In NRDC the High Court looked to the application of the claimed method. That is similar to the approach of courts in the United States. A product of a method is something in which a new and useful effect may be observed. For claimed computer programs, the courts looked to the application of the program to produce a practical and useful result, so that more than ‘intellectual information’ was involved. CCOM provides a useful analysis of the development of patent law in this context. The underlying principle, developed from the Statute of Monopolies, that business, commercial and financial schemes, which are ‘intellectual information’ are not themselves properly the subject of letters patent, was maintained. As Gyles J concluded in Arrow Pharmaceuticals Ltd v Merck & Co Inc (2004) 213 ALR 182 at [87], cited by the Full Court in Merck at [23], a method that is in the nature of directions for use does not constitute an invention or a manner of manufacture. Neither in Merck, nor here, has some previously unrecognised property of an aspect of the method been discovered.
Contrary to Mr Grant’s submission, the method of his patent does not produce any artificial state of affairs, in the sense of a concrete, tangible, physical, or observable effect. It is quite different from the invention in Catuity, which was a method involving components such as smart cards and point of sale terminals, and produced tangible results in the writing of new information to the Behaviour file and the printing of the coupon (at [128]). While there was not a physically observable end result in the sense of a tangible product, the invention involved an application of an inventive method where part of the invention was the application and operation of the method in a physical device. Within the concept of NRDC an artificial state of affairs was produced, a state of affairs created by the application or effect of the method.”
In Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 it was stated at [94]:
“When the authorities in Australia prior to and including Grant are considered, a consistent approach emerges as to the relevance of:
·a distinction between a claim to a business scheme and claims to methods which in practice result in a new machine or process or an old machine giving a new and improved result – that is, a distinction between mere intellectual information and a method that affects the operation of an apparatus in a physical form (Grant at [18]);
·the fact that the claimed steps are foreign to the normal use of computers, such as the production of an improved curve image (IBM 2 at 225-226);
·the particular mode or manner of achieving an end result which is an artificially created state of affairs, such as the storage of data as to Chinese characters and retrieval of graphic representations to enable word processing (CCOM at 295);
·whether part of the invention is an inventive method which includes the application and operation in a physical device (Grant at [30]);
·the distinction drawn in Catuity, as explained in Grant (at [24]), between ‘a technological innovation which is patentable and a business innovation which is not’. In Catuity, Heerey J did not accept that a physically observable effect was necessarily required (at [128]) but the Full Court in Grant expressed the opinion that a physical effect in the sense of a concrete effect or phenomenon, or manifestation or transformation is required (at [32]).
·the fact that a physical effect is required does not make it sufficient to confer patentability;
·the fact that a method may be called a business method does not prevent it being properly the subject of letters patent (Grant at [26] citing Catuity at [125]-[126]);
·the fact that for claimed computer programs, the courts look to the application of the program to produce a practical and useful result, so that more than ‘intellectual information’ is involved (Grant at [29]). A method that is in the nature of directions for use does not constitute an invention or a manner of manufacture in the absence of some previously unrecognised property of an aspect of the method (Grant at [29]).”
In Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (“RPL”), the Full Court of the Federal Court stated at [96] and [98]:
“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.
…
It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent”.
The Full Court of the Federal Court in RPL then detailed a number of considerations relevant to the determination and coming from earlier decisions of the Court. Summarising from [99] of RPL:
- It is necessary to ascertain whether the contribution to the claimed invention is technical in nature.
- One consideration is whether the invention solves a “technical” problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
- Does the claimed method merely require generic computer implementation?
- Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea?
Examiner Objection - 2017100560
The Examiner objection in the third adverse report of 2017100560 stated:
“Objection item 2 of the previous report is maintained. The application is not for a manner of manufacture (MOM) within the meaning of paragraph 18(1)(a) of the Patents Act because the subject matter of the claims 1-5 represents nothing more than a scheme, considered to be not patentable.
Your response to the previous report is acknowledged.
Your comments about the examiner not being a person skilled in the art (PSA) and therefore not being able to understand the alleged invention is also acknowledged. However, as a delegate of the Commissioner of Patents, an examiner is considered a notional PSA for examination purpose and is allowed to think like a PSA.
Thank you for your reference(s) to various case laws in the last response.
The pertinent points identified in your response with regard to MOM appear to be:
On page 9:
'Thus the technical problems are:
how to create a safer working environment;
more specifically, providing a process to have risk assessment occur each time a field workers undertakes a job, so as to be in the front of mind and to take account of the hazards on each occasion;
more specifically still, to provide a tool for facilitating this process that does not suffer from the disadvantages of the paper based processes and does not exacerbate the problems as the current software solutions do; and further, the infrastructure to achieve this tool is required';
on page 10:
'The solution to the problem/technical contribution is several-fold:
1) It creates a safer working environment;
2) It creates an improved process to have risk assessment occur each time a field works undertakes a job;
3) It creates a process of sharing workplace risk information with other works in a real time manner, by use of an electronic tool;
4) It creates infrastructure to implement the tool'.
and further on page 11:
'The contributions noted above are technical because:
1) they define an artificially created state of affairs that have economic benefit akin to the improved growing conditions of a weed free field as per the NRDC decision, in this case being a safer working environment, increased awareness and consideration of workplace hazards, and reduced costs due to down time arising from incidences and more importantly reduced injury and death on worksites;
2) Is technical as the process of sharing of information related to workplace safety and job risk involves newly configured electronic equipment to collect, transfer, retain and reuse the appropriate information (as opposed to any or generic information and thus is not merely a scheme); and
3) Is technical because it involves electronic equipment that must be altered from an out of the box state, where it is generic computer equipment, to be of a specific form, where the alteration is more than mere generic information collection, transferring and storage as any generically configured program computer could do. That the Examiner could not make a mobile phone and a server do what is claimed without the benefit of the teaching of the specification is proof of this and is supported by the expert opinion in paras. 39 and 40'.
However, the technical problems as referred to in the response are not considered to be technical at all, rather the problem(s) as stated refers to environmental development in work area and mental awarness of a field worker. These problems are not technical in nature (as in involving technological problems) but organisational/business procedural shortfalls. The solutions as referred to in the response are steps/ideas to implement business decisions and to modify business processes to address operational requirements. The technical contributions referred to such as configuration, alteration in a generic computer and a mobile device (the description does not provide much details about the nature and any special non-generic feature of such alteration, configuration) are part of generic configurations of a computer or a mobile device and do not provide any technical contribution to the art.
The ingenuity of your alleged invention appears to be in the business decision to share risk management documents (Pre-Start Checklists, Job Safety Assessments etc.) among various workers and other users with an administrative role/field worker role and to make such documents available and accessible to complete/update and share the completed/updated documents as required and the specific information/data being manipulated/processed. Such a business scheme when implemented on a generic portable device/computer as in your application, does not involve more than a generic utilisation of well-known functions of such a device/computer, and therefore does not involve any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method. As a result, there is no technical contribution to the art.
Consequently, as per Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 and Commissioner of Patent v RPL Central Pty Ltd [2015] FCAFC 177 the alleged invention is not a manner of manufacture.”
Examiner Objection - 2017100943
The Examiner objection in the third adverse report of 2017100943 stated:
“Objection item 3 of the previous report is maintained. The application is not for a manner of manufacture (MOM) within the meaning of paragraph 18(1)(a) of the Patents Act because the substance of the alleged invention is a mere scheme and does not provide a technical contribution to the art. An invention that does not provide a technical contribution to the art cannot be an invention that is a manner of manufacture under s 18(1)(a).
Your response to the previous report is acknowledged. Your comments with regard to Novelty & Inventive Step [sic] on pages 5-6 of your response are persuasive.
Your comments about the examiner not being a person killed in the art (PSA) and 'The Examiner continues to mischaracterise the invention' is also acknowledged. However, as a delegate of the Commissioner of Patents, an examiner is required to put themselves "in the shoes of the skilled worker" and make their own assessment of what the notional skilled worker was likely to have done at the priority date (see MPP 2.5.1.6A).
Thank you for your reference(s) to various case laws.
The pertinent points identified in your response with regard to MOM appear to be:
On page 2: 'Applicant's invention in this application in having certain information (users, jobs, roles, authority etc.) stored and information retrieved according to the role of the user for a particular job. The information retrieved involves a complex selection of the information needed. This information is sent to and received by a user device for receiving an input based on the transmitted information. The received information is assembled and presented in the form of a dynamic risk related document, that is interactive, in that the information received is used to create indicia for receiving of a selection from the user based on information presented to the user, selected job, the that role for that job. The selected information is then returned to the server. The server is then able to process the returned input to determine what that user and/or other users are permitted to do for their respective jobs..........
The inventor has realised that hierarchical control is required, but not merely based on the identity of the user. It also has to be based on the role of the identified user for a particular job at the time the document (eg., a permit) is being actioned. It also has to be based on the current authority the user has at the time the document is being completed, and it has to be limited by the maximum authority the user is permitted for a particular role for a particular job being performed by a particular enterprise'.
However, it is clear from the present description that these 'hierarchical control' consisting of current/maximum authority, job selection, role for that job etc. as alluded to are not dynamic or interactive. These are business or admin rules pre-defined by a project manager, see para 0097 of present description where it is stated: 'Project managers can access the desktop front-end to perform tasks including creating jobs, allocating personnel to jobs, setting job roles within defined authority, attaching job plans and issuing job alerts (that is an alert to people operating on a particular job) or in relation to a particular aspect of the job'. A hierarchical control as mentioned is standard in a business and comes with every position and allocated roles of a person performing a job in a certain position.
Further, the only dynamic and interactive document reference in the description is to 'pre-starts checks', see in para 0133, '...Risk assessments in relation to particular equipment and registers are static, but pre-starts checks are specific and dynamic. When a pre-start item of equipment is selected a templated set of checks is shown, that is able to be interactive...'. This is akin to a filling out a standard checklist before starting a job and making a decision based on the findings on that checklist or akin to well-known business practices where a suitable fillable form is selected and provided to a user based on the user's role/position. Therefore these business decisions based on certain rules when implemented on a computer system via software do not provide any technical contribution to the art. It is inevitable that software configuration will be encountered whilst implementing a scheme on a computer; evidently, such software configuration does not by itself represent a technical contribution.
With regard to your comment about CCOM on page 3 and '..the configuration of the hardware in the specific manner required creates newly configured hardware capable of doing what the unconfigured hardware is not able to do in the unaltered state...' on page 5, the difference between CCOM and your alleged invention was discussed in the previous report. In any event, the technical contributions referred to such as the interactive dynamic document (which is a pre-starts check), configuration, alteration in a generic computer and a portable device (the description does not provide much details about the nature and any special non-generic feature of such alteration, configuration) are part of generic configurations of a computer or a portable device and do not provide any technical contribution to the art.
Your comments about the recent decision of Patent Investment & Licensing Company [2018] APO 1 (PILC) para 47 and 62 on pages 4-5 are not persuasive. At para 47 it was said: 'Generally, a recommendation or prediction could be a considered a technical contribution to the art. For example, a recommendation or prediction of where to drill oil wells based on seismic data may be considered a technical contribution to the art.'[Emphasis added].
At para 62 it was said: 'Generally, modification of a person’s behaviour could be considered a considered a well-defined result. For example, a method of eliminating obsessive compulsive behaviour from a person afflicted with such a condition may be considered a technical contribution to the art.' [Emphasis added].
However, para 47 and 62 do not provide a blanket statement that claims to a recommendation/prediction or behaviour modification would be automatically patentable. Rather para 47 and 62 of Patent Investment & Licensing Company [2018] APO 1 (PILC) merely indicates that such claims do not necessarily always lack a manner of manufacture and that each claim needs to be considered on its own merits. Your alleged invention manipulates data which are part of a business administration hierarchy based on business rules [position, roles, jobs allocated etc.] and any information entered into a pre-start checklist are only records of a observation made by a user, which is not the same as recommendation or prediction of where to drill oil wells based on scientific exploration such as seismic data.
Further, para 66 of Patent Investment & Licensing Company [2018] APO 1 (PILC) clarifies what could be a behavioural modification, '...For example, if the result was a measurable and significant reduction in compulsive behaviour as determined through rigorous scientific experiments, then this might be considered to be of practical utility.' That is what the hearing officer in Patent Investment & Licensing Company [2018] APO 1 (PILC) is merely restating in para 62 is the fact that therapeutic treatments such as methods for treating a disease by administering a compound to a patient are
patentable according to the High Court in Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd [2013] HCA 50 (see MPP 2.9.2.13). It is noted in passing that the Apotex decision acknowledges that there is a distinction between such methods of treatment and the activities or procedures of doctors (and other medical staff) when physically treating patients, e.g. surgical procedures). Your alleged invention's contribution of ‘a user ...handling risk assessment documents in a manner that is more attentive then the prior art process and thus more effective as a risk assessment..' as alluded to in page 5 is simply not the same as behavioural modification of the sort contemplated in para 66 of Patent Investment & Licensing Company [2018] APO 1 (PILC). The ingenuity of your alleged invention appears to be in the business decision to provide risk management documents (Pre-Start Checklists, Job Safety Assessments etc.) among various workers and other users based on allocated positions, jobs etc. i.e. mere business rules and to store such documents with user input and the specific information/data being manipulated/processed. Specifically, the innovative concept or substance of your invention revolves around the idea of using the role or position of a person to determine the checklist to provide to that person. There is nothing technical about this idea or scheme. Such a business decision or idea when implemented on a generic portable device/computer as in your application, does not involve more than a generic utilisation of well-known functions of such a device/computer, and therefore does not involve any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method. As a result, there is no technical contribution to the art. Your claimed invention is quite similar to the application which was refused in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (RPL), where in that decision the following was said at paras 110-113:"RPL Central does not claim any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method. Accordingly, the ingenuity of the inventors must be in the steps of the method itself. The method does utilise the speed and processing power and ability of a computer but there is no suggestion that this is other than a standard operation of generic computers with generic software to implement a business method. This is the method of taking the information as to available criteria for Units of Competency and reframing those criteria into questions and presenting them to, and receiving the answers from, the user together with any documents that the user wishes to append. The reframing of the criteria into questions may be outside the generic use of a computer but the idea of presenting questions, by reframing the criteria, is that: an idea. It is not suggested that the implementation of this idea formed part of the invention. Indeed, no instruction as to such programming is provided in the specification other than the idea of turning the performance criteria provided by the NTIS into a question by prepending or otherwise inserting a form of words.
111. The problem may be one of confronting the “maze” of available information concerning the RPL of different Units of Competency in different institutions, but the solution to that problem, to be patentable, must involve more than the utilisation of the well-known search and processing functions of a computer, for example an invention in the way in which the computer is utilised.
112. Recognising that the claims are to a method and system comprising a combination of integers, it is necessary to understand where the inventiveness or ingenuity is said to lie. Turning to the integers of the invention as set out at [36] and [38] and summarised at [37] and [39] above, it is apparent that, other than the integers providing that the computer processes the criteria to generate corresponding questions and presents those questions to the user, the method does not include any steps that are outside the normal use of a computer. … It is not suggested that the presentation of the questions or the processing of the user's responses involve ingenuity themselves or that this constitutes the requisite manner of manufacture.
113. We conclude that the claimed invention is to a scheme or a business method that is not properly the subject of letters patent."
The above comments are applicable to the present alleged invention where applying business rules such as allocated positions, jobs etc. to the selection/processing of risk documents does not include any steps that are outside the normal use of a computer or utilise well-known processing functions of the computer and there is no invention in the way in which the computer is utilised i.e. no modification to the computing apparatus.
In summary, your claimed invention does not result in an improved computer or in a computer being able to do something, which hitherto, it could not be made to do via e.g. standard programming techniques. Consequently, your claimed invention provides no technical contribution e.g. to a technological field. Furthermore, I do not see any feature within your description that could possibly be considered as patentable subject matter.
Consequently, as per Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 and Commissioner of Patent v RPL Central Pty Ltd [2015] FCAFC 177 the alleged invention is not a manner of manufacture.”
Evidence
The evidence comprises:
·Three declarations made by Jacqueline Outram dated 16 January 2018, 27 February 2018, and 3 April 2018
·A declaration by Michael McDonald dated 3 April 2018
·A declaration by Craig Hyde dated 3 April 2018.
The specification
The background for both 2017100560 and 2017100943 explains:
Current field risk management practices include a plethora of regulations, codes and standards with regard to employee health & safety, environmental protection and quality management. Every company must comply with all of the requirements -but compliance is particularly difficult when employees are involved in activities that:
A) are remote from an office or desk ('front line' employees)
B) occur across multiple sites or sites that change daily (eg. plumbers, electricians, mobile technicians, mobile health care services);
C) involve building construction, mining, civil construction or any other 'high risk' tasks.
The inventions in the patents seek to overcome these problems by automating the risk management with computers as explained further in this decision.
Claims of 2017100560
The proposed amendment of 17 January 2018 of claim 1 of 2017100560 is as follows:
A method of providing information for risk management to a user of a portable personal computing device performing a job in the field, said method comprising:
selecting a document to be completed by the user related to a job to be performed by the user;
downloading information to the portable personal computing device;
displaying the downloaded information for selection of items in the information so as to complete the selected document; wherein the downloaded information comprises information provided by one or more other users having an administrative role and information provided by one or more other users having a field worker role;
receiving input to the portable personal computing device, wherein the input comprises selection of one or more of the items in the information, and/or the input comprises providing new information;
uploading the input, whereby a record of the input is stored in relation to the selected document, and the new information is added to the information to be downloaded by other users.
To summarise the claim, the invention is a method for risk management which utilises a portable computing device. The portable computing device allows the field worker to use a selectable and expandable list to generate a risk assessment document. The information in the list is generated by two sources: users with an administrative role and users with a field worker role. When the field workers modifies the list by selecting and expanding the list, this information is uploaded and can then be downloaded and used when other field workers are generating risk assessment documents.
I note that I have used the word ‘list’ as shorthand for the feature of the claim of ‘items in the information’.
Claims of 2017100943
The proposed amendment of 27 February 2018 of claim 1 of 2017100943 is as follows:
A method of providing information for risk management to a user of a portable personal computing device performing a job in the field, where the job is one of a number of possible jobs the user may be assigned to perform in the field and where the assignment of the user to one of the jobs is recorded on a server, and where the user has one or more possible roles to perform in relation to the job and is assigned a current role from one of the possible roles in relation to the job, where the user has a maximum authority in relation to the respective role for the respective job, and where the user is assigned a current authority in relation to the respective role for the respective job, said method comprising:
identifying the user using the portable personal computing device;
receiving, by the portable personal computing device, a list of the possible jobs associated with the identified user from the server;
selecting a job to be performed by the identified user from the received list;
downloading from the server information related to the selected job to the portable personal computing device, wherein the downloaded information comprises information determined relation to the selected job, and the current authority that user has in relation to the selected job;
displaying the downloaded information for selection of one or more indicia in the information so as to complete a risk related dynamic document created from the received information, wherein completion of the dynamic document is required for the user to be able to commence or to complete the work required of selected job;
receiving user input to the portable personal computing device, wherein the user input comprises a selection of at least one of the indicia;
uploading the user input to the server, whereby a record of the input is able to be used in relation to the selected job.
The proposed amendment of 27 February 2018 of claim 5 of 2017100943 is as follows:
A risk management system comprising:
a server;
a plurality of portable personal computing devices;
a communication channel between the server and each portable personal computing device;
wherein the server is configured to receive communication requests for information from each portable personal computing device and to send information to each portable personal computing device through the communication channel;
wherein each portable personal computing device is configured to send and receive information to and from the server through the communication channel;
wherein each portable personal computing device is configured to identify a respective user of the respective portable personal computing device;
wherein the system is characterised by the server being configured to store a plurality of user identifiers, each one being related to zero, one or more of a plurality of jobs, and each user’s role with respect to each job, and each user’s maximum authority in relation to the respective role from the respective job, and each user’s current permitted authority in relation to the respective role for the respective job;
wherein each user’s current authority in relation to the respective role for the respective job may be changed, as required, up to the user’s maximum authority in relation to the respective role for the respective job by a supervisory user having authority to make such a change;
wherein the server comprises a rules engine configured to determine what one of the users is permitted to do in relation to one of the jobs according to the role the user has in relation to the respective job, information received from one or more portable person computing devices, the information being one or more inputs received from one or more respective users in the field, and the respective user’s current permitted authority in relation to the respective role for the respective job;
wherein each portable personal computing device is configured to:
select a job to be performed by the identified user;
receive information from the server to the respective portable personal computing device that is related to the selected job, wherein the received information is determined according to the user’s role in relation to the selected job, and the current authority that the user’s role has on the selected job;
display one or more indicia each related to a portion of the information so as to complete a risk related dynamic document created from the received information, wherein completion of the dynamic document is required for the identified user’s role in relation to the selected job;
receive user input to the respective portable personal computing device, wherein the user input comprises a selection of at least one of the indicia;
send information comprising the user input to the server, whereby a record of the user input is able to be stored by the server and used in relation to the selected job;
wherein a response is determined by the server according to the sent user input, wherein the response determines what the user of the portable personal computing device is permitted to do in respect of the job and/or what other users are permitted to do in respect of the job, wherein the response is transmitted to one or more of the portable personal computing devices according to the respective user’s role in relation to the respective job.
Claims 1 and 5 relate broadly to the same invention. To summarise the claims, the invention is a method for risk management which utilises a portable computing device. The identity of the user is determined. The user has a level of authority assigned to their current role. A list of jobs associated with the identified user is presented to the user. The user selects a job to be performed. Information about the job, tailored to the user’s level of authority, is downloaded onto the portable computing device to create a list. The user then selects items from the list to generate a risk related dynamic document.
Prior art
The PCT application from which the present application was divided had an International Search Report with 4 documents cited. One of the cited documents is US2004/0078098 (JEFFRIES) titled “Computer System for Assessing Hazards”. This prior art document is considered relevant to the considerations of manner of manufacture as discussed below.
Is a risk management system, in itself, technical in nature?
The patentee states in their submissions:
The invention solves a technical problem outside the computer. At the immediate level, the technical problem is how to produce more effective Risk Assessment documents that are not plagued by the issues with the prior art Risk Assessment documents.
At a broader level, the technical problem is how to achieve a safer workplace. It is accepted that this problem could be described as a mixed technical/organisational problem, in that it is caused by both technical and organisational reasons, and susceptible to both technical and organisational solutions. However, as noted above, the solution taught is a technical one.
The patentee further states in their submissions:
The application of the claimed methods produces a practical and useful result in a number of ways. The immediate practical and useful result is the production of higher quality and more effective Risk Assessment documents as a result of the operation of the method.
The broader practical and useful result is the achievement of safer workplaces, particularly where there are remote (front-line) employees, multiple sites or sites that change daily, or building construction, mining, civil construction and other high risk workplaces.
Risk management processes are put in place for a variety of reasons such as: regulatory requirements, company policy, insurance requirements, and increased safety. There is no evidence to support the assertion that this invention will result in safer workplaces, thus the risk management process is not considered to result in a technical effect. I note that even if there was evidence to prove that the risk management system did result in safer workplaces this would be indicative, but not determinative, of a technical effect.
Consequently I am not satisfied that an improved risk management process or system is, in itself, a technical effect. However, if the implementation of the risk management system provides a technical contribution to the art, then this may lead to a finding of a manner of manufacture.
I will now assess the contribution to the art made in the claimed inventions of 2017100943 and 2017100560.
Contribution to the art - 2017100560
The patentee states in their submissions:
“The solution to the identified problems provided by the invention in ‘560 is a technical contribution rather than an organisational solution. An example of an organisational solution would be to provide training to field personnel in the methods and importance of filling out Take5s and JSA.
The solution provided by the claimed methods is a technical contribution over the prior art paper based methods for a number of reasons. First, by the use of interconnected physical devices field users are required to create their own Risk Assessment documents in a new and different way. This includes the selection of hazards with the assistance of selectable lists that are available as a result of the computers programmed in accordance with the methods of the invention.
Secondly, the invention also includes the ability to add items to the expandable list that is then effectively instantly available in the selectable expandable lists available to other field users.
This was not an option with the prior art template documents, which were either pre-populated or blank (or a combination of the two), and is only possible as a result of the technical contribution made by the methods of the invention, carried out on computer systems programmed according to the invention.
The method of ‘560 caters for dynamic real time adjustment a technical functionality that was not available before the invention claimed.”
The invention of 2017100560 has two main elements: different users having different roles (e.g. administrative role and field worker role), and the list of items that can be added to and downloaded by other users.
User roles
Claim 1 defines in part:
displaying the downloaded information for selection of items in the information so as to complete the selected document; wherein the downloaded information comprises information provided by one or more other users having an administrative role and information provided by one or more other users having a field worker role;
Descriptive support of this aspect is provided at paragraph 62:
Each document that requires an action (eg; agreement or signing) will have an action button that allows the user to perform the action. The action to be performed is adapted according to the status of the document, and the role the user has in relation to the document and the job. When actioned, a copy of the document before actioning is saved and a new document created. A document can be locked while another requirement is pending. For example if a permit is in the process of being transferred from one holder to another, a field personnel will not be able to accept the permit or close the permit.
Allowing different users (or users with different roles) different levels of access to a system is considered a non-technical feature. Furthermore, allowing different users different levels of access appears to be known in the prior art, for example document US 2004/0078098 (JEFFRIES) at paragraph 83 states:
In this embodiment, the database 10 can be edited by authorized persons with appropriate privileges to add, edit and remove data to any of the data categories 11-24. An authorized person may also edit the links between the hazards category data 12 and the hazard descriptor data 14, and between the hazard descriptor data 14 and each of the data categories 16-24. It is preferred that where the authorized person wishes to edit the risk rating for a particular hazard, or to determine the risk rating for a newly created hazard in the second hazard data 14, the computer system presents the authorized person with the same questions that are shown in FIG. 4, and which are used in determining the user-perceived risk, So that the predefined risk rating 24 is determined in accordance with the same criteria as those used to assess the user-perceived risk.
Consequently I am not satisfied that allowing different users (or users with different roles) different levels of access to a system is technical nor does it provide a contribution to the art.
Updateable list
The 560 patent has an updatable process for document generation. The user is presented with a list of related risks. The user is also able to customise the list by adding related risks that they have identified. The document is generated. The record of input (i.e. the selections made and the additions to the list) is uploaded to the server. The additions made to the list are stored, and presented the next time the list is accessed.
An updateable process for document generation appears to be known from prior art document US 2004/0078098 (JEFFRIES) also in previously cited paragraph 83.
The document generating process is described in US 2004/0078098 at paragraph 74:
Once all the relevant hazard descriptor questions 46 have been answered, and the equipment, permits and risk ratings linked to Selected hazard descriptor questions 46 identified, then the computer Software is operable to produce the safety report 54, an example of which is shown in FIGS. 3A to 3D.
Thus, although the claimed updatable process for document generation may be considered technical, it cannot be considered a contribution to the art.
Substance of the invention of 560
The substance of the invention is an automated method of filling out a risk assessment form. The substance of the invention in this case is closely analogous to the substance of the invention found in RPL. I consider the substance of the invention is a scheme or a business method that is not a manner of manufacture.
Dependent claims of 560
The dependent claims are as follows:
2. The method of claim 1, wherein the selection of the job comprises selection of a task type template, wherein the template selected preselects the labels of the fields in the document to be completed by the user entering the information into the document.
3. The method of claim 2, wherein the task type template is able to be allocated by a user with a field supervisor / manager role to a user with a field worker role for completion.
4. The method of claim 3, wherein the template comprises fields for inputting: method steps, tasks, risks and controls to be assessed by the user prior to commencement of the job, and the input comprises entering the method steps, tasks, risks and controls using the downloaded information.
5. The method of claim 3 or 4, wherein the method further comprises tracking whether the user has completed the form and flags to the field supervisor / manager and that the user has yet to complete the form, or tracks that the user has not completed the form, until the user has completed the form.
The dependent claims do not provide any significant technical feature beyond the independent claim and the substance of the invention of the dependent claims is essentially the same as the independent claim.
Conclusion on 560
An improved risk management system is not, in itself, a technical effect. Neither of the two main elements of the claimed invention – user roles and updatable process for document generation – are considered to be a contribution to the art. The substance of the invention is an automated method of filling out a risk assessment form. I consider the substance of the invention is a scheme or a business method that is not a manner of manufacture.
Contribution to the art - 2017100943
The patentee states:
“The solution to the identified problem provided by the invention in ‘943 is a technical contribution rather than an organisational solution. An example of an organisational solution would to provide training to field personnel in the importance of monitoring the impacts of changes in frontline logistics so as the appropriate people are, for example, operating equipment, signing checklists or obtaining permits.
The solution provided by the claimed methods is a technical contribution over the prior art paper based methods for a number of reasons. It is a technical solution because it operates through dynamic digital documents and logic relationships existing in a network of devices.
By the use of interconnected physical devices field users are delivered different and appropriate risk-related information and documents depending on their fixed company hierarchy and its interaction with the highly dynamic frontline logistics as a result of the computers programmed in accordance with the methods of the invention.
This was not an option with the prior art template documents when there were changes in frontline logistics, where the impacts of the changes were either ignored or managed manually by frontline personnel, resulting in safety impacts or increased time and costs, if in fact, frontline personnel had a sufficiently detailed understanding of the potential safety impacts and paperwork changes required for each logistical change. The claimed methods and system are technical in nature, not organisational.
The method of ‘943 caters for dynamic real time adjustment, a technical functionality that was not available before the invention claimed.”
The invention of 2017100943 has two main elements: the hierarchy control and the selectable list that generates the risk assessment document.
Hierarchical control
The patentee stated in their response to the second examination report:
“The inventor has realised that hierarchical control is required, but not merely based on the identity of the user. It also has to be based on the role of the identified user for a particular job at the time the document (e.g., a permit) is being actioned. It also has to be based on the current authority the user has at the time the document is being completed, and it has to be limited by the maximum authority the user is permitted for a particular role for a particular job being performed by a particular enterprise.
In a standard information share, there is no tracking of these things, nor is there determinations made according to the currant [sic] status of each of these things. The attached declaration outlines the problems addressed by the invention and the technical solution implemented by the invention.
The advantage that this invention achieves is that hierarchies can be implemented for controlling who has permission to authorise what, which may be different between the same person working in different roles, for different jobs and at different times for different enterprises. This is particularly useful when implementing a safety permit system. When a permit issuer is for example absent for a day, such as due to illness, a rigid safety permission system does not work. The current paper based system involves manual changes to documents, or creation of new documents. An interactive dynamic document is simply not possible using the prior art. The hierarchical control that accounts for who has permission to authorise what, according to their role and time at which the action is occurring, makes this solution workable.”
The hierarchical controls are explained in the Ms Outram’s declaration of 27 February 2018. For example, at paragraph 22:
“The solution of Innovation Patent 2017100943 is to have multiple risk-based hierarchies together with logic which determines:
A) Whether each risk hierarchy is located on the Desktop Application, the Mobile Application or both
B) The priorities and relationships between each risk hierarchy assuming zero logistical changes
C) How each logistical change (or series of logistical changes) impacts each risk hierarchy and/or combinations of risk hierarchies
D) The outcomes for each user of impacts to risk hierarchies and/or combinations of risk hierarchies.”The submission state at paragraph 85:
“There are an infinite, or at least indefinite, number of combinations of responsibilities and authorities for any single front line worker at any single point of time, and for any single piece of work, all as a result of the interface between the fixed company authorities and the dynamic front line logistics.”
As noted above in the analysis of 2017100560, I found that US 2004/0078098 (JEFFRIES) discloses allowing different users different levels of access. Jeffries does not disclose a user having one or more possible roles to perform in relation to the job and being assigned a current role from one of the possible roles in relation to the job. The written submissions and oral submissions emphasised the benefits of allowing the user levels of access to be changed according to the hierarchical controls.
On the basis of the information available to me, I am satisfied that the hierarchical controls as defined in the claims were not previously known. I consider the hierarchical controls defined in claims may be a contribution to the art.
The hierarchical controls are a process for assigning levels of responsibility to people and the roles which are currently occupying. Such an allocation of responsibility is organisational rather than technical in nature. Indeed, in the hearing the patentee conceded that arranging a hierarchy of workers was not, by itself, patentable. Thus, I consider the contribution to the art of hierarchical controls is a non-technical contribution to the art.
Dynamic document generation
The 943 patent defines a process for document generation. After selecting the job, the user is presented with a list of related risks. The relevant risks information is selected and a document is generated. The record of data input by the user (i.e. the selections made) is uploaded to a server.
A process of dynamic document generation is described in US 2004/0078098 (JEFFRIES) at paragraphs 66 to 68:
In use, to produce a safety report 54 for a particular task or job, the user firstly inputs general information, such as user details, and reference details about the particular task, and selects the appropriate work area-for the task from the work area data 11. This is done by entering the details in a form 60 presented to the user on the display 3-as illustrated schematically at FIG. 8.
The computer system is then operable to present to the user-on the display 3-a series of questions which ask whether each of the hazard categories stored in the hazard category data 12-and that are linked to the selected work area-is applicable to this task. If the user answers “no, i.e. that it is not relevant, then a question corresponding to the next hazard category from the hazard category data 12 is presented to the user. If the user indicates that a hazard category from the hazard category data 12 is applicable to this task, by answering “yes”, then the computer software references the hazard descriptor data 14 that is linked to that identified hazard category and presents, to the user, those hazard descriptor questions 46 which are applicable to this task. Thus, for a particular work area, the user is presented with hazard descriptor questions 46 that are linked to that work area. The user can then answer “yes” or “no” to each of these hazard descriptor questions 46. By answering “yes” or “no” to each presented hazard descriptor question 46, the user is selecting whether that particular hazard is relevant to that particular task or job. Examples of hazard descriptor questions 46 are shown in FIGS. 3B to 3D where they are printed in the final safety report 54.
This process is repeated until all of the hazard categories from the hazard category data 12 and relevant hazard descriptor questions 46 from the hazard descriptor data 14 have been presented to the user, and answered.
The uploading of information is also disclosed, e.g. at paragraph 94:
Further, subscription users can recover a previously completed safety report at 130. This allows subscription users to quickly produce a safety report for a repeated task, or to use a safety report for a similar task as a starting point in producing a new safety report. Thus, having recovered an existing safety report, a subscription user can proceed to select a primary work type at 122.
Although the process for dynamic document generation may be considered technical, it is known in the prior art and thus I do not consider it to be a contribution to the art.
Substance of the invention of 943
The substance of the invention is an automated method of filling out a risk assessment form. The substance of the invention in this case is closely analogous to the substance of the invention found in RPL. I consider the substance of the invention is a scheme or a business method that is not a manner of manufacture.
Dependent claims of 943
The dependent claims are as follows:
2. The method of claim 1, wherein the method further comprises determining what the user is permitted to do in relation to the selected job according to the role the user has in relation to the job, the received user input, and the respective user’s current permitted authority in relation to the role for the selected job and displaying on the portable personal computing device what the user has been determined to be permitted to do in relation to the selected job.
3. The method of claim 2, wherein the downloaded information comprises a form template that is to be completed by the person according to their role in relation to the selected job, wherein the user completes the form, wherein completion of the form comprises using the portable personal computing device to allocate of other persons allocated to the selected job to roles in relation to a permit, wherein the downloaded information comprises an indication to the user of the maximum authorities that can be allocated to each other person for their respective role in relation to the selected job; and the method further comprises displaying indicia able to be selected for allocation of one or more roles in relation to the permit; and the display of what the user has been determined to be permitted to comprises whether the user is currently permitted to perform the job.
4. The method of any one of claims 1 to 3, wherein the current authority in relation to the respective role of the user for the selected job is allocated from a hierarchy of authorities available up to a maximum authority of the user for an enterprise for which the user is able to complete the work by a supervisory user of the enterprise having authority to make such a change.
The dependent claims do not provide any significant technical feature beyond the independent claim and the substance of the invention of the dependent claims is essentially the same as the independent claim.
Conclusion on 943
An improved risk management system is not, in itself, a technical effect. The contribution to the art of the invention appears to reside in the hierarchical control and not the dynamic document generation. The hierarchical control is not a technical contribution to the art. An invention with only a non-technical contribution to the art cannot be considered a manner of manufacture. Thus what is apparently new is not a technical contribution, and what is possibly a technical contribution is not new.
The substance of the invention is an automated method of filling out a risk assessment form. I consider the substance of the invention is a scheme or a business method that is not a manner of manufacture.
Is there anything in the descriptions that could form the basis of patentable claims?
The specifications provide a ‘high level’ description of the invention. That is, the descriptions provide an explanation of what each element of the invention does, however provide very little in the way of technical information of how each element of the invention operates, for example algorithms or programing code.
I have found that the ‘high level’ elements of the invention such as hierarchical control and user authorisation are not technical contributions to the art. I have also found that the elements that could possibly have been considered technical are not new, and thus do not provide a contribution to the art.
I have reviewed the specification and cannot identify any other ‘high level’ elements of the invention that could potentially provide a technical contributions to the art. Furthermore, there is essentially no ‘low level’ description of the technical details of the invention (e.g. programming code, or communication protocols) that could provide a technical contribution to the art. If there were a requirement for ingenuity in the working of the computer to enable the invention, any detail of this ingenuity is not described.
In summary, I can find nothing in either specification which may be considered a technical contribution to the art. Consequently, I can see no purpose in providing the patentee an opportunity to amend either specification.
Conclusion
I have found that the claims are not for a manner of manufacture. Furthermore, I find no patentable subject matter in the application. Innovation patents 2017100560 and 2017100943 are revoked.
Xavier Gisz
Delegate of the Commissioner of Patents
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