Venkat Thandra; Ahmed Farouk Shaaban - [2022] APO 65

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Venkat Thandra; Ahmed Farouk Shaaban [2022] APO 65
Patent Application: 2015284128

Title:System and method for allocating value to timekeeper work

Patent Applicant: Venkat Thandra; Ahmed Farouk Shaaban

Delegate:Mr Kevin Restrick

Decision Date: 20 September 2022

Hearing Date: Written submissions filed on 4 June 2021 and 28 January 2022

Catchwords: PATENTS - examiner’s objection – whether invention is a manner of manufacture – fee agreement – scheme – business innovation – alleged invention not a manner of manufacture – application refused

Representation: Patent attorney for the applicant: Murray Trento & Associates Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2015284128

Title:System and method for allocating value to timekeeper work

Patent Applicant: Venkat Thandra; Ahmed Farouk Shaaban
Date of Decision: 20 September 2022

DECISION
The claimed invention is not for a manner of manufacture.
I refuse the application.

REASONS FOR DECISION
Background

The present matter concerns patent application 2015284128 (“the application”) in the name of Venkat Thandra and Ahmed Farouk Shaaban (together, “the applicant”). The application was filed on 30 June 2015 under the provisions of the Patent Cooperation Treaty. The application claims priority from US 61/998,577 filed 30 June 2014 and US 14/756,616 filed on 30 June 2015.
The application has been the subject of two examination reports. The objections in the first report were that the claimed invention was not for a manner of manufacture, the claims were not clear, and the claimed invention lacked an inventive step. Despite responsive submissions from the applicant and a statement of proposed amendments to amend the description and the claims the examiner maintained the manner of manufacture objection in a second report along with an objection that one claim was not clear.
On 26 February 2021 the applicant wrote to the Commissioner requesting to be heard in relation to objections outstanding in the second report. On 4 May 2021 the Commissioner wrote to the applicant indicating that the hearing would be conducted by way of written submissions. The applicant filed their submissions on 4 June 2021 (“the applicant’s submissions”). In addition to their submissions, the applicant proposed an amendment to claim 5 to address the clarity objection from the second examination report. On 3 December 2021, the Commissioner provided the applicant an opportunity to provide further submissions in response to the decision of the Full Court of the Federal Court in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (“Aristocrat ’21”). The applicant filed further submissions on 28 January 2022 (“the applicant’s further submissions”).
While the final date for acceptance of the application was 27 February 2021, when the Commissioner gives an applicant an opportunity to be heard in relation to an examiner’s objection and issues a written decision patent sub-regulation 13.4(1)(g) may be available to extend the time for gaining acceptance to 3 months from the date decision is issued. Of course, this regulation is of no relevance if the application is refused.
During examination, amendments to the specification were proposed on the 5 February 2021. Further amendments were filed with the applicant’s submissions on the 4 June 2021. No objection has been raised to the allowability of the amendment of 5 February 2021 and I see no ground to object to the amendment of 4 June 2021. In this decision I am considering the specification as proposed to be amended, and references to the specification are to the specification as proposed to be amended.
Before continuing further, I would like to address a request from the applicant. The applicant’s further submissions acknowledge the presence of information at IP Australia that assists examiners in performing their role with respect the application of the principles of manner of manufacture. The applicant suggests that attorneys have not had the benefit of this information. Irrespective of my assessment regarding the claims’ validity, the applicant requested that the application be returned to examination for at least a further six-month period in view of “greater insight” from recent exchanges between IP Australia and the applicant’s attorney and to avoid “any possible procedural unfairness”. I do not agree that this is either necessary or appropriate. The reasoning underpinning the objections to the claims of this application has been communicated in examination reports. The applicant has been given an opportunity to be heard in relation to the examiner’s objection, and to present their view as to the relevant principles derived from the case law and their application to the presently claimed invention. I do not agree there has been a denial of procedural fairness.
The invention as described
The title of the invention is “System and method for allocating value to timekeeper work” and the application is directed to the field of timekeeping and billing systems used in professional companies such as legal and accounting firms.
The background of the invention on page 4 through 25 explains that computerized time and billing systems are widely used by professional firms to perform a very wide range of administrative, financial, and legal functions. For example, such systems can be used for tasks such as processing credit applications, generating quotes, tracking of tasks, storing client details and contract terms, and generating invoices. The background section of the specification at pages 24 and 25 focusses the discussion on the prior art problems and explains that:
“Thus, nowhere in the prior is seen a billing system which can provide an improved and flexible and expedient means to provide new and existing clients with a wide variety of templates for fee arrangements which include but are not limited to: discounted hourly rates, blended and banded rates, offer specials and coupons that expire after a certain period of time; fee arrangement that are provided for prompt or early past payment, fee arrangements that use templates that have worked favorably in the past with the client, and other fee arrangements suited to induce the client to use the firm, continue to work with a firm, or bring a former client back to a firm on favorable terms and conditions.”
The application approaches this problem by describing an online client fee agreement creation system and method. The summary of the invention and the detailed description section of the specification are directed to a legal professional firm; however, the system and method has application in many commercial settings.
The described system and method allow an online client to select the area of law that they need help from the professional firm. Based upon their response they will be presented with a set of template fee agreements that they can review and select one that best suits their needs. Each template has a respective set of terms that are selected by the client, for example to specify billable rates or a contingency fee. A fee agreement is then automatically generated for the client using the template and terms they have selected. The system also allows the client to upload another firm’s fee agreement. This agreement is scanned and optical character recognition (OCR’ed) is performed and then the text analysed to identify contract terms such as billable rates in order to provide a competitive quote on the client’s business. The system generated fee agreement is then updated and provided to the client for review and electronic signature.
The benefit such as system provided is explained on page 37:
“Since all of the terms and conditions have already been selected by the client from a wide variety of Fee Templates best suited to the Client's needs, this cuts significant time in arriving at a fee agreement, and can be done in the Client's office or home in complete privacy. Preferably the Fee Agreement proposed by the Client may be reviewed in one day or even a few hours, and it can then be returned to the client by email with an encoded electronic signature so that the attorney or attorneys involved may begin work on the Client's legal issues within the shortest period of time.”
The system and method are conveniently summarized in Figure 1 reproduced below:

The claims

The application, as proposed to be amended, comprises 6 claims, of which 1 and 3 are independent.
Claim 1 reads as follows:
A computer system for creating a fee agreement, the system including:
a single application server including a processing device and a non-transitory storage medium for storing instructions that when executed by the processing device cause the processing device to perform the following:
receive identification of a legal field from a user device;
responsive to the legal field, provide a plurality of template fee agreements to
the user device;
receive identification of a single template free agreement of the plurality of template fee agreements from the user device to provide a selected template free agreement;
receive terms selection data according to the selected template fee agreement from the user device to provide selected terms;
automatically generate a fee agreement based on the selected terms for the selected template fee agreement;
scan and perform optical character recognition on another fee agreement; analyze the another fee agreement for a term or condition including at least one of a billable rate, a contingency fee, or a term of payment;
provide the term or condition to the fee agreement based on the analysis of the another fee agreement; and
display the fee agreement for review and electronic signature.
Independent claim 3 is a method claim having the following preamble:
In a single application server, a method for creating a fee agreement, the method including:
The remaining features of claim 3 are largely identical to those following the preamble of the independent claim 1; the difference being the claims are to method steps corresponding to the system features of claim 1. The appended claims define further details of the fee agreement system and method. If required, the complete claim set can be viewed online.
Aside from the matter corrected by proposed amendment filed 4 June 2021 no issues with the construction of the claims have been raised during examination. I note there are a number of instances in the claims that refer to “free agreement” and I consider these typographical and understand the term to be “fee agreement”. Otherwise, I am satisfied that in the context of the specification the claims are sufficiently clear.
The remaining objections
As a result of the proposed amendment dated 4 June 2021, I consider claim 5 to be clear and consequently the clarity objection of the second examination report has been addressed. The only remaining objection outstanding is that the claims are not for a manner of manufacture.
The objection that the claims are not for a manner of manufacture has been pursued through the two examination reports for the application. The reasoning presented by the Examiner across the reports has consistently been that the claimed invention is directed to a scheme for preparing a fee agreement. The examiner has maintained that the claimed invention does not provide a contribution that is technical in nature and it does not result in an improvement in the functioning of a computer irrespective of the data being processed. Where there is a technical aspect to the claimed invention, such as scanning, OCRíng, and analyzing text for a fee agreement term, the examiner has stated that it is achieved utilising well-known generic implementation of computers and computer generic functionalities.
Applicable Law
As the application was filed after 15 April 2013 it is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Accordingly, the standard of proof that applies is the balance of probabilities (subsection 49(1)). I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application pursuant to subsection 49(2).
The statutory basis for manner of manufacture is found at s18(1)(a) of the Act which states:
“(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard 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; and ...”
In National Research Development Corporation v Commissioner of Patents, [1959] HCA 67, (1959) 102 CLR 252 (“NRDC”), the High Court provided a statement of the law in this regard. 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”.
At page 276, the High Court in NRDC further observed that what is meant by a “product” in relation to a process is only something in which a new and useful effect may be observed. More specifically:
“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”.
The High Court though was not laying down a precise formulation that can be applied without detailed consideration and that a case-by-case approach should be taken. In D’Arcy v Myriad Genetics Inc. [2015] HCA 35 (“Myriad”), 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.”
In Myriad, Gageler and Nettle JJ. at [144] stressed the importance of having regard to the substance of the claimed invention, not simply the form of the claim:
“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.”
The principle of identifying the substance of the invention when determining whether a computer implemented method is patentable has been discussed in multiple decisions. For instance, Commissioner of Patents v RPL Central Pty. Ltd. [2015] FCAFC 177 (“RPL”) at [96] – [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. 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.
Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or wifi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?
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.”
RPL went further with regard to the role the computer plays stating at [107]:
“Simply putting a business method or scheme into a computer is not patentable unless there is an invention in the way in which the computer carries out the scheme or method.”
Similarly, the importance of recognising that there needs to be an improvement in the computer per se for an invention to be a manner of manufacture was brought up in in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (“Research Affiliates”). The Full Court of the Federal Court noted a distinction between mere implementation of an abstract idea in a computer and implementation of the idea in a computer that created an improvement in the computer. At [103]:
“... there is a distinction, between mere implementation of an abstract idea in a computer and implementation of an abstract idea in a computer that creates an improvement in the computer”.
Thus, in relation to computer implemented inventions it is necessary to look at the invention as a matter of substance, rather than as a matter of form. If the invention is as a matter of substance directed to patentable subject matter, then it follows that it is of a manner of manufacture as defined by previous authorities.
The Courts have been consistent in their approach in ensuring that where a method is claimed, that consideration is not just given to the words of the method but that there are physical computing integers involved and that it is the combination of interworking computing integers or advance in those that needs to be considered when working out the substance of the invention. At RPL [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.”
The recent Full Federal Court decisions in Commissioner of Patents v Rokt Pte Ltd (“Rokt”) [2020] FCAFC 86 and Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] (“Encompass”) FCAFC 161 confirmed and applied the principles from Research Affiliates and RPL. More recently the Full Court in Aristocrat ’21 at [56] - [57] observed in relation to a claim defining an electronic gaming machine (EGM) with a particular feature game:
“What this purpose-specific but extremely common computer does is play the feature game. Consequently, the substance of the invention disclosed by Claim 1 is that feature game implemented on the computer which is an EGM. It is therefore a computer-implemented invention.
As we have already observed, integers 1.10-1.12 embody an abstract idea which may be characterised both as a set of rules defining a family of games and as a business scheme for increasing player interest in an EGM. As such its implementation in the computer which is an EGM cannot constitute patentable subject matter unless it represents an advance in computer technology.”
RPL [99] to [107] and Research Affiliates [94] provide considerations that assist in determining where the substance of computer implemented inventions resides and whether that material is patentable. Conveniently these considerations have been summarised by the Delegate in Aristocrat Technologies Australia Pty. Ltd. (“Aristocrat ‘16”) [2016] APO 49 at [35] and which remain relevant in view of subsequent Full Court Decisions:
“I conclude that it is relevant to consider a range of matters. Without seeking to be exhaustive, these include:
·there must be more than an abstract idea, mere scheme or mere intellectual information;
·is the contribution of the claimed invention technical in nature;
·does the invention solve a technical problem within the computer or outside the computer;
·does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
·does the application of the method produce a practical and useful result;
·can it be broadly described as an improvement in computer technology;
·does the method merely require generic computer implementation;
·is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
·is there ingenuity in the way in which the computer is utilised;
·does the invention involve steps that are foreign to the normal use of computers; and
·does the invention lie in the generation, presentation or arrangement of intellectual information.”

This approach remains relevant in view of subsequent decisions. In Aristocrat ’21, it was found that a game implemented on an electronic gaming machine was not patentable. After first identifying the claimed invention as involving a mere game which was unpatentable, the Full Court asked whether the claimed invention was a computer-implemented invention before determining that for the claims to be patentable, there needed to be “an advance in computer technology”. On appeal to the High Court, in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 the Court was evenly split, and via section 23(2)(a) of the Judiciary Act 1903 affirmed the Aristocrat ’21 decision, while appearing to confirm that an advance in computer technology is not a useful test for patentability. Additionally, the High Court appeared to confirm the decisions of the Full Federal Court in RPL, Research Affiliates, Encompass were correct.
The submissions
The focus of the applicant’s submissions is in regard to whether it was appropriate for the examiner to characterise the claimed invention as a scheme. They argue that the existing objection is based solely on the examiner’s belief that the claimed invention only requires generic computer implementation. The applicant submits that:
“…the Examiner has failed to appreciate a number of technical features that, in combination, provide a practical and useful result in the form of a more expedient provision of fee agreements to clients whilst using less computer processing resources and fewer computer memory resources as compared with prior systems and hence, cannot reasonably be characterised as solely an abstract scheme or the implementing of a business process. “
The applicant also submits that the claimed features of the system scanning and performing optical character recognition on another fee agreement and the analysis of that agreement for a term or condition are technical in nature and provide a technical solution. The applicant submits:
“…at least scan[ning] and perform[ing] optical character recognition on another fee agreement, analyz[ing] the another fee agreement for a term or condition including at least one of a billable rate, a contingency fee, or a term of payment, and provid[ing] the term or condition to the fee agreement based on the analysis of the another fee agreement thereby contributing to providing a technical solution to the problem(s) faced by the inventors.”
The applicant refers to the recent Patent Office decisions Jagwood Pty Ltd [2020] APO 38 (Jagwood) and eBay Inc. [2020] APO 49 (eBay) and draws parallels with these decisions and the role of computing elements and their technical contribution. I will address these submissions when I consider the substance of the invention below.
The applicant’s further submissions continues their argument that the present application involves more than generic computer technology and brings in discussion from the recent decision of Aristocrat ’21 that terminology and consideration of whether computer components or methodology is “generic” in nature should be avoided. The applicant states:
“Accordingly, the comments of the Full Court in ARISTOCRAT21 make it clear that consideration regarding whether a claimed invention involves generic computing implementation does not assist when assessing whether a claimed invention represents an advance in computing technology and there is a danger of “talking loosely” with an expression such as “generic computing technology” since the meaning of this phrase is unclear. Accordingly, in view of ARISTOCRAT21, consideration whether an invention uses “generic computing technology” should be avoided when assessing whether a claimed invention comprises patentable subject matter.”
From the same decision, the applicant notes that a scheme once implemented to provide a useful result should no longer be merely a scheme:
“… guidance is provided by Nicholas J in paragraph 118 of ARISTOCRAT21 confirming that once a scheme is given practical effect and transformed in a new product or process which solves a technical problem, or makes some other technical contribution in the field of the invention, it may no longer be considered merely a scheme.”
The applicant’s further submissions also refers to the decision in CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168 (CCOM) and the associated guidance in the Patents manual of Practice and Procedures which I will also address when I consider the substance of the invention below.
Manner of manufacture consideration
A stepped approach for assessing manner of manufacture can be summarised as construing the claim, identifying the substance of the claimed invention, and then asking whether the substance of the claim lies within established principles of what constitutes a patentable invention.
As I have indicated above, the applicant has not disputed any construction or fundamental case law issues, and neither have I identified any further issues to address. I note that there appears to be no dispute as to the legal principles involved. Rather the area of disagreement is the substance of the invention and its characterisation. I will initially consider this issue with regards to independent claim 1 that defines a computer system for creating a fee agreement. Afterwards I will consider independent claim 3, the dependent claims, and any further matter that may be described but not claimed.
The claimed invention
The invention defined by claim 1 is directed to a system for creating a fee agreement. The specification discusses various forms of fee agreement used by professional and consulting firms and the detailed description presents examples of fee agreements used in an attorney firm. It is quite apparent the system and method need not be limited to any specific format or layout of agreement. I note that the claims are directed towards a “user’ in that the claims refer to “a user device” throughout. The description however also refers to a client. In practice I see no distinction; one could imagine the system being used directly by a customer or client of an attorney firm (for example) or equally used by an employee of the firm preparing a fee agreement for the customer.
The claim defines that system is implemented on:
“a single application server including a processing device and a non-transitory storage medium for storing instructions that when executed by the processing device cause the processing device to perform the following,”
I consider this language indicates the system uses general purpose and purely conventional computing technology and does not require any special hardware or computing infrastructure to operate. This is apparent from the specification in so far that it does not provide any technical or computing detail as to how to put the claimed invention into practice relying on the common general knowledge of the reader to understand how to implement the claimed invention.
The application is providing the user an online service as discussed earlier in this decision and consequently the claim defines the server having a series of functions to allow user input. Claim 1 continues with the features:
“receive identification of a legal field from a user device;
responsive to the legal field, provide a plurality of template fee agreements to the user device;
receive identification of a single template free agreement of the plurality of template fee agreements from the user device to provide a selected template free agreement;
receive terms selection data according to the selected template fee agreement from the user device to provide selected terms;
automatically generate a fee agreement based on the selected terms for the
selected template fee agreement;”
As I understand it, the user engages with the system to make appropriate selections based on their business requirements. The system receives from the user an indication of the service they are interested in obtaining from the firm. In response, the system presents to the user a series of pre-existing template options for the fee agreements. The user is able to select the fee agreement template that meets their requirements. Page 35 of the description explains:
“…the online System will ask the client about the Area of Law that the Client needs help in; any by using a menu, the Client can decide between, for example: Litigation or Non-Litigation are the basic categories. Under Litigation may appear: Car Accident, Personal Injury, Breach of Contract, Business Dispute, Divorce, Infringement, etc. Under Non-Litigation may appear: Tax, Estates, Wills and Trusts, Intellectual Property, etc. Additional sub menus will allow the client to better define the area of law… Once the Area of Law is selected, then the client will be provided with a set of Templates for Fee Agreements 16 and then the Client may review and select a Fee Arrangement template that best suits the Client's needs”
Once the appropriate fee agreement has been selected the system is able to receive specific terms from the user. The Description on page 35 explains:
“If the Area of Law is hourly, a list of Attorneys and their billable rates may be selected at this point, or the client may select from a Blended rate where one senior attorney may supervise attorneys with less experience, and the rate for all attorneys will fall somewhere between the highest billing attorney and the lowest billing attorney. In any case, the client will select one or more attorneys and billable rates which are acceptable to the client 20.”
The final step in this sequence sees the system populate the user selected fee agreement template with the user selected terms.
There are no features in this part of the claim discussed above in [37] nor in the specification as a whole that would suggest this part of the claim is nothing more than running through a predefined set of logic steps defined by the firm. If the customer is interested in criminal law; then present them fee agreements for criminal law. If the customer is interested in commercial law; then present commercial law agreements. Similarly allowing the user to enter or select their terms and conditions is nothing more than presenting the user with a series of hard coded options for terms such as billable hours, or alternatively allowing the user to enter values for such terms is nothing more than routine data entry. Such options will have been determined by the law firm as part of their commercial pricing strategy and are the types of matters that are routinely discussed as part of any contract or sales negotiation between a customer and service provider.
Put alternatively this is just an example of tailored customer service whereby the computer performs a series of predetermined administrative steps. The decision on which fee agreement templates or terms that the firm makes available and for which the user selects are business decisions. The computing system is simply carrying out nothing more complex than a series of predefined steps.
Once a template fee agreement has been generated and the user’s provided terms entered there is the additional step of:
“scan and perform optical character recognition on another fee agreement;
analyze the another fee agreement for a term or condition including at least one of a billable rate, a contingency fee, or a term of payment;”
I note there is no definition as to where this “another fee agreement” has come from. However, this is not necessarily important to the system per se, suffice all the system requires is the ability to scan, perform optical character recognition (OCR), and analyse the results to identify a predetermined term or condition. The specification at page 36 explains the purpose of this step:
“Next, the Client will be offered the ability to competitively cross bid one or more legal projects by uploading another Firm's Fee Agreement into the System 26 and the System will scan and OCR the document and analyze it for billable rates, contingency fees, terms of payment and other terms and conditions in order to provide a competitive quote to the Client's business.”
The applicant’s submissions have placed great emphasis on this aspect of the claimed invention. I find this interesting because there is no further information about this function in the specification aside from what I have reproduced above. Specifically, there is no technical information as to how this function is performed, why it would be particularly complex, and neither is there any information as to why this function is included and how it provides any benefit, other than the usual and well-known benefit bestowed by OCR, namely to extract data from documents in pdf or similar formats. The user already has the opportunity to select and enter their preferred terms and so what benefit does OCR’ing an existing fee agreement provide? If the user has another firm’s agreement to hand then they can add the relevant terms in the earlier part of the claim. In the absence of any special computer equipment, I can only consider that this step of OCR’ing an agreement and then analysing and extracting a term is just an administrative step that the system performs instead of the user manually entering the term data.
The claims finishes with the following steps that are quite apparent as to what they encompass and that is entering data into the selected fee agreement template and presenting it to the user. Such steps are simply administrative in nature and need no further discussion:
“provide the term or condition to the fee agreement based on the analysis of the another fee agreement; and
display the fee agreement for review and electronic signature.”
The Substance of the invention
It is apparent from the specification that the invention described addresses problems related to the administrative process of setting up and populating contractual fee agreements. The claimed system provides for the administrative steps by the user of supplying information, selecting a template, populating the template with user information, and then scanning and OCR’ing another agreement to identify data that is subsequently included in the fee agreement. It is clear the claimed invention affords results useful in the business sphere. However, this does not preclude the claims defining patentable subject matter and I need to determine where the substance of the invention lies.
In assessing the substance of the invention, I will refer to the non-exhaustive list of considerations the Delegate articulated in the Aristocrat ’16 decision as mentioned above in [27]. I note that the applicant has placed particular significance on the considerations of whether only generic computing technology is being used, whether there is a practical and useful result, and whether the contribution of the claimed invention is technical in nature. It should of course be noted that these considerations are simply guides to understanding where the substance of the invention lies rather than a means for mechanically determining whether the claims define patentable subject matter.
Does the invention use generic computer technology?
I will start by acknowledging the cautionary comments regarding the terminology “generic computer technology” made by Middleton and Perran JJ in Aristocrat ’21 at [35] and [38]:
“… we do not with respect find especially helpful concepts such as ‘generic computer technology’ or ‘generic software’ (invoked in this appeal by the Commissioner) because it is unclear to us what they actually mean.”
and that
“… to enquire into whether a computer is generic does not seem to add much to the basic question of whether the invention claimed represents an advance in computer technology.”
I also note that in the same decision, Nicholas J provided further elaboration on where the term can in fact be useful to distinguish between general purpose computers used in a distinct field of technology and those that have a special purpose in themselves, and that considering this distinction has benefit when determining whether computer implementation transforms an idea into a patent-eligible invention. At [112]:
“The recent Full Court decisions concerned with computer implemented schemes have drawn on this [‘generic computer technology’] language. The same language was also used by the United States Supreme Court in Alice Corporation Pty Ltd v CLS Bank Int’l 573 US 208 (2014), where the Court held that merely requiring generic computer implementation does not transform a patent-ineligible abstract idea into a patent-eligible invention. The fact that the computer technology is generic, in the sense of purely conventional, and is utilised for its well-known and well-understood effects, provides a useful signpost when deciding whether, what began as an abstract scheme or idea, has been transformed into something that is sufficiently different to constitute an artificially created state of affairs.“
Consequently, I do not agree with the applicant’s further submissions where they state:
“… consideration regarding whether a claimed invention involves generic computing implementation does not assist when assessing whether a claimed invention represents an advance in computing technology and there is a danger of “talking loosely” with an expression such as “generic computing technology” since the meaning of this phrase is unclear. Accordingly, in view of ARISTOCRAT21, consideration whether an invention uses “generic computing technology” should be avoided when assessing whether a claimed invention comprises patentable subject matter.”,
but I do agree there needs to be a level of care when weighing up the considerations, and, as pointed out by the applicant’s further submissions, the majority in Aristocrat ’21 at [36] and [37] made clear that use of a “generic” computer to implement an invention does not preclude the invention being considered an advance in computer technology.
What I strongly disagree with though is the applicant’s comment in their further submission:
“Accordingly, it is clear from the Full Federal Court decision of RPL2, and more recently ARISTOCRAT21, that a claimed invention solely involving the implementation of an abstract idea on a generic computer is not sufficient to support a conclusion that the claimed invention lacks patentable subject matter.”
RPL and Aristocrat ’21 are not consistent with this conclusion. For example, Aristocrat ’21 at [89] states:
“an abstract idea by implementing it in a computer has not been accepted by this Court as something warranting, without more, the grant of a monopoly. “
and further at [118] – [119]:
“Mere business schemes, and abstract ideas or information, have never been regarded as sufficiently tangible in character to constitute patentable subject matter. Implementing the scheme, idea or information in a generic computer utilising its well-known and well-understood functionality does not change its fundamental character.”
In any event, there is, as indicated in Myriad, no precise verbal formula for the determination of manner of manufacture.
In summary, there are clearly a number of the considerations from earlier cases as to the weight given to generic computer technology and how it may infer patentability on what at face value may be considered a scheme. Consistent with the balance of Full Court authority, where the disclosure of the computer technology (hardware or software) is at a generic/broad level, and the use thereof is conventional or standard, this will generally be indicative of an absence of any advance in the technology that is so described.
Having stepped through the invention in detail above it is quite apparent that the claims and the described invention are specified with a high degree of generality in relation to the physical means of implementation of the claimed system and method. In fact, there are no technical details as to how the claimed system and method is to be implemented. There certainly are no steps that are foreign to the normal use of computers, there is nothing claimed that could be considered special in how the user enters their information, nothing interesting in how a database may return a template, and as I shall discuss in more detail shortly, there is nothing unusual or exciting as to how an existing fee agreement is OCR’d analysed and terms identified. I also note that the applicant has not identified anything special about the computer or the algorithms used, and neither has an argument been made that the computing technology is anything but generic, purely conventional, and utilised for its well-known and well-understood effects.
Is there an improvement in the computer?

The applicant’s further submissions provides a number of arguments as to where and why their claimed invention includes an improvement in the computer. The submissions start with:
“… [present claims] provides a specific improvement as compared with prior systems and methods when creating a new fee agreement since the invention avoids the need for excess processing and memory requirements. This results in an improvement since using the information obtained to create the new fee agreement is a ‘meaningful limitation’.”
Therefore, the Applicant contends that the claimed invention results in a technical contribution by reducing processing and memory requirements that would otherwise be required. This improvement, as argued, provides a practical and useful result for both the business and client. The business can allegedly create an agreement without the need for excess processing and memory requirements and the client is assured that they will receive competitive rates and a prompt response.”
I do not find this argument convincing because there is no evidence to indicate that the computer is working more effectively with fewer memory requirements and reduced processor effort. The contrary appears to be the case. The prior art solutions where a human manually extracts from another fee agreement and enters it into an online form would require less computational effort. In fact, one could argue the addition of the scan and OCR functions add unnecessary complexity; why scan and OCR a fee agreement and then have the computer analyse it to extract terms when those terms could have been entered into the template by a user at an earlier step? Regardless, it is quite clear that the specification does not in any way discuss or address computing resource constraints or improvements and no such detail has been presented in the submissions such that, at best, any computing resource conservation is merely incidental to, and dependent upon, how the invention is implemented. Furthermore, the absence in the description of any programming instruction means the person skilled in the art is left entirely to determine how to implement the alleged invention. In circumstances where implementation is entirely left to the skilled addressee, there is no reason to suppose that the claimed invention necessarily avoids the need for excess processing and memory resources as an inevitable consequence of implementing the claims. The fact that different programming may result in different computing resource constraints further reduces any alleged impression that the claimed invention reduces processing and memory resource usage in any way.
The further submissions continue with:
“the combination of technical features recited in the claims including at least scan[ning] and perform[ing] optical character recognition on another fee agreement, analyz[ing] the another fee agreement for a term or condition including at least one of a billable rate, a contingency fee, or a term of payment, and provid[ing] the term or condition to the fee agreement based on the analysis of the another fee agreement, represents an ‘advance in computing technology’ since it provides a technical solution to the problem(s) faced by the inventors.”
I do not consider this argument carries much weight. Software to scan and OCR documents is widely available and routinely used in many scenarios. Similarly, sorting through OCR’d text to identify terms or certain data items is widespread. In preparing this decision I am relying on scanned and OCR’s documents and manually using the ‘CTRL – F’ function to find relevant pieces of text. I do not see a technical solution being created – all the constituent parts of the claimed invention are known and the only alleged improvement is that a user is not having to manually scan and OCR a document and then find terms themselves. In my mind this is an administrative improvement in workflow achieved by merely automating a form filling process; each constituent part of the process and system is known, each part performs its role, and it is only being integrated with other pieces of software. If there is something special in how the ORC’d text is analysed to find a term, then this has not been presented and consequently I fail to see where the advance in computing technology is occurring.
The applicant referred to CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (CCOM) and the corresponding section of the Patent Manual of Practice and Procedure (the Manual) in support of the proposition that an abstract idea implemented on a generic computer may be patentable if the computer can be considered “improved”. The invention in CCOM related to use of a keyboard to generate Chinese characters and was characterised by the Full Court in Research Affiliates as:
“…using a particular method of characterisation of character strokes, applied to an apparatus in such a way that the operation of a keyboard would enable the selection (through a computer) of the appropriate Chinese characters required for word processing in that language”.
Although CCOM was decided before Myriad and Research Affiliates (and the subsequent series of Full Court decisions concerning computer-implemented inventions), it provides some discussion, albeit at a general level, as to what may constitute providing an improvement in computer technology. The Full Court in CCOM at [128] said:
“The NRDC Case (102 CLR at 275-277) requires a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour. In the present case, a relevant field of economic endeavour is the use of word processing to assemble text in Chinese language characters. The end result achieved is the retrieval of graphic representations of desired characters, for assembly of text. The mode or manner of obtaining this, which provides particular utility in achieving the end result, is the storage of data as to Chinese characters analysed by stroke-type categories, for search including ‘flagging’ (and ‘unflagging’) and selection by reference thereto.”
This is consistent with the way the Manual characterises CCOM:
“While the decision did not say it, an improved data structure that [facilitates] the easier or improved finding of items in a computer implemented searching device has a material advantage. It is not business administration, nor merely information.”
The applicant submitted that:
“… the present invention may be regarded analogous to the CCOM claims since the present claims define a method that, when implemented on a standard computing device, results in an improved finding of a term or condition for inclusion in a fee agreement to thereby automatically create fee agreements in a more efficient manner requiring less processing and memory resources.”
Firstly, no evidence or submissions have been made that support the notion that the claimed invention includes a scanning and OCR system that works more effectively or with greater accuracy than existing solutions. Similarly, the specification provides no detail such as algorithms, reliance on machine learning, or any other technology that would indicate the aspect of the claim “analyze the another fee agreement for a term” is performed in an improved manner. The only improvement I can see is one that is administrative: rather than a person using inbuilt and available computing technology to scan/OCR a document and find a term, a computer system is doing it automatically. This is an administrative or logistical improvement, not a computational improvement. Consequently, I do not consider that there is an improvement in how characters in an existing fee agreement are being identified.
Even if I was to accept that the present invention and the CCOM invention both provide efficiency, I do not agree that the present invention is in substance analogous to the CCOM invention. The invention of CCOM can be characterised as providing an improved computer in the sense that a technical limitation in the operation of a computer to assemble Chinese text was overcome. The present invention does not, as described, overcome any limitation in computing technology or provide an improved computer in this sense. Rather, it populates a template fee agreement with user defined data and then modifies that agreement by the addition of terms extracted from another agreement using known and well-tried software. I consider this is conventional use of computing technology.
Finally, and further to above at [52], conserved computer processing and memory resources in this context are not indicative of an improvement in the computer and in the absence of evidence in the specification or through submissions it is questionable if this is actually the case.
Does the invention as claimed solve a technical problem within the computer or outside the computer?
The applicant’s further submissions state their claimed invention:
“…addresses the technical problems associated with wastage of computing resources and inefficient processing associated with the generation of custom fee agreements.”
Whilst this is a very broad characterization of the problem that the applicant wants to resolve I note that this problem can be addressed by either patentable technical innovations or business innovations which are not patentable.
The applicant further states that it is the inclusion of the scanning, OCR, and analysis of another fee agreement for a term that provides the solution to their problem:
“Regarding the present invention, the Applicant submits that the combination of technical features recited in the claims including at least scan[ning] and perform[ing] optical character recognition on another fee agreement, analyz[ing] the another fee agreement for a term or condition including at least one of a billable rate, a contingency fee, or a term of payment, and provid[ing] the term or condition to the fee agreement based on the analysis of the another fee agreement, represents an ‘advance in computing technology’ since it provides a technical solution to the problem(s) faced by the inventors.”
I accept that the computer system of claim 1 must be able to perform these defined steps to create a fee agreement. However, there are no details in the specification nor from the applicant’s submission to indicate there is a particular technical problem within the computer that has been solved to arrive at the claimed invention. Specifically, the applicant has not provided any submissions to indicate that automating and integrating a well-known and routine step such as a user OCR’ing and finding a term in a document is a technical problem within the computer. Put alternatively, I fail to identify any technical obstacle that has been overcome in order to put the various integers of claim 1 together. At best the applicant is addressing an administrative problem arising external to the computer that is solved by an administrative innovation in the form of automating this scan/OCR/analyze step rather than allowing a user to enter a fee term themselves.
Are there any steps foreign to the normal use of computers?
Further to the discussion above in [52] and as first noted in paragraph [42] the specification provides no technical detail, IT architecture, or computational details of how to implement the system on a computer. This suggests that the applicant considers the method can be implemented using nothing more than the reader’s common general knowledge.
I acknowledge that Rokt urged caution when linking whether features are common general knowledge with an assessment of patentability at [91] stating:
“It is apparent that where the cases refer to “generic software” or to the use of computers for their “well-known” purpose, it is not a finding as to common general knowledge. Rather, it is a reference to computer technology that is utilised for its basic, typical or well-known functions. The means of determining that this is so is primarily by a careful review of the specification in order to ascertain, by construing that document, whether the invention described and claimed is in substance any more than a scheme that utilises computers in such a way. This is a question of characterising the invention as set out in the specification.”
The applicant’s various submissions have emphasised the fact the claimed invention is a combination of technical computing features and specifically the inclusion of the functionality to scan/OCR/analyse for a fee term. However, the applicant has not identified why these aspects of the invention involve steps foreign to the normal use of computers. Referring to Rokt at [100]:
“However, the steps are foreign to the normal use of computers only in the sense that they have not previously been performed by a computer. That is not the same as saying that a computer would not normally be used to perform such steps.”
I am satisfied, based on the material available to me from examination, that whilst the claimed elements of the invention may have never been brought together in the manner claimed, each of the components of the system is performing the role it was designed for and there is nothing to indicate that the hardware and software involved is being used other than for its ordinary and well known purposes. The bringing together of these IT components is simply for the purpose of a business innovation realised by automating known and available computing tools.
Is there a practical and useful result?
As identified above, the system and method generates a fee agreement that incorporates data elements extracted from a scanned, OCR’d, and analysed existing fee agreement. With regards to the result, the applicant’s submission states:
“…number of technical features that, in combination, provide a practical and useful result in the form of a more expedient provision of fee agreements to clients whilst using less computer processing resources and fewer computer memory resources as compared with prior systems…”
The issue I have is whether this is a “practical and useful result” in the sense of assessing manner of manufacture. The Deputy Commissioner statement in CareFusion 303, Inc. [2021] APO 11 (CareFusion) at [58] “Not every result which might colloquially be considered useful is relevant” is very apt. The Deputy Commissioner went on to refer to Full Court’s statement in Research Affiliates at [114]:
“To take the words of NRDC at 268, the process does not produce ‘either immediately or ultimately, a useful physical result in relation to a material or tangible entity.’ The claimed method, the result of the ingenuity of the inventors, does not produce such a result; the ingenuity is in the scheme. Again, drawing from NRDC at 270, there is a useful result of the claimed process but there is no physical thing ‘brought into existence or so affected as the better to serve man’s purposes’. There is no ‘physical phenomenon in which the effect, be it creation or merely alteration, may be observed’ (NRDC at 276).”
As these decisions indicate, a physical product is not necessarily needed from the application of a method or scheme for there to be a practical and useful result. In CareFusion the Deputy Commissioner recognised that a reduction in wastage of medications was a practical and useful result of a scheme implemented by generic computer technology. In summary, I consider a “practical and useful” result is one that is just that – practical or “real world”, rather than abstract.
It does appear reasonable that the claimed combination of software and hardware will result in providing the user with a faster service in that a human user does not need to manually OCR and analyse a fee agreement to find a fee term and does not need to manually enter the term into a template. Instead, the computer performs these steps. However, I am not convinced that simply providing a speedier service is a practical and useful result as determined by earlier decisions. Firstly, in the context of customer service – in this case generating a fee agreement – I consider providing a more expedient service to be a business consideration, particularly as no technical barrier has been presented that the applicant has overcome. Secondly, it is apparent this result does not extend beyond being simply the implementation of a series of administrative steps and there there is no physical thing brought into existence or so affected as the better to serve man’s purposes as discussed by Research Affiliates.
In terms of the second part of the applicant’s submission, I refer back to [51]. There is no evidence provided in the submissions nor specification to support how this system uses less computer processing or memory resources.
The applicant’s submission makes reference to the eBay decision where the delegate, at [41], indicated that the result, physical directions for a recommended route to avoid congestion provided to a user, was “…a practical and useful result that is not related to a business process or business rules…” and concluded at [43]:
“In contrast to that defined in Research Affiliates, RPL, Encompass, and Rokt, the claims of this application clearly define more than an abstract idea. In combination the claims define changing the physical directions provided to a user based on at least the current time, a time to start or restart of the event and congestion along the route to get to the point of interest. The provision of physical directions for the user to take, as claimed, is not considered to be abstract or implementing a business process, but rather a physical and technical solution to a physical and technical problem that provides a practical and useful result.”
It is apparent that the delegate considered the “practical and useful result” achieved from the scheme to be more than simply the result of implementing a business process within a computer, affording a physical result and a solution to a physical and technical problem. As I have noted above, this finding is different to the present case where I have found an invention that administratively generates a fee agreement using a computer.
In summary, while the claimed system may provide an advantage to the user, this advantage is purely in a business and administrative context. And whilst providing a useful result in the colloquial sense, I do not consider it to provide a “practical and useful result” that would provide for a patentable invention.
Is the contribution of the claimed invention technical in nature?
The applicant submitted that:
“… the Examiner has failed to appreciate a number of technical features that, in combination, provide a practical and useful result in the form of a more expedient provision of fee agreements to clients whilst using less computer processing resources and fewer computer memory resources as compared with prior systems and hence, cannot reasonably be characterised as solely an abstract scheme or the implementing of a business process. Furthermore, the technical features recited in the claims including at least scan[ning] and perform[ing] optical character recognition on another fee agreement, analyz[ing] the another fee agreement for a term or condition including at least one of a billable rate, a contingency fee, or a term of payment, and provid[ing] the term or condition to the fee agreement based on the analysis of the another fee agreement thereby contributing to providing a technical solution to the problem(s) faced by the inventors.
In the Applicant’s respectful submission, it is clear the Examiner has incorrectly characterised the substance of the presently claimed invention by continuing to assert an inappropriate requirement regarding a ‘technical improvement’ in computer technology without due consideration regarding a possible improvement in respect of ‘how’ the computer technology is used. “
The submissions go onto refer to the Delegate’s comments in the Jagwood decision and draw my attention to paragraphs [82] and [83] where the Delegate identifies that a synergistic utilization of technology has been used to overcome the inventor’s problem. With reference to the present application, and aligned with the Delegates discussion of “how the computer technology is used” at [90], the applicant submits that:
“… the Examiner appears to consider the JAGWOOD claims, in contrast to the claims of the present invention, resulted in ‘an improved computing arrangement’. However, it is clear from the comments of the Hearing Officer in at least the above identified passages in JAGWOOD, that a claimed invention may be properly considered to be in respect of patent-eligible subject matter despite involving only the use of a generic computing device.”

I consider the use of computer technology in Jagwood to be different to the problem being addressed by the present application. The delegate in Jagwood concluded that the claimed invention provided a technical solution to the applicant’s problem. Specifically at paragraph [83]:
“The location of the financial document and the use of this location in the reference field of the electronic payment system are inexorably intertwined with the computing and networking systems. It is a technical solution because this synergistic utilisation of technology overcomes the problems faced by the inventor.”
I compare this to the present applicant where it is not apparent that there is a synergistic utilization of technology. The creation of a fee agreement from a template with user entered date to include scanned, OCR and analysed fee term is not, to my mind, “synergistic utilisation of technology” or any other manner of technical advance in, or utilisation of, computing technology. The applicant’s system is described at such a high level of abstraction with a complete absence of technical computation detail leaving the user to work out how to implement the system leaves me with the conclusion that the substance of the invention does not reside in any technical features per se, but in abstract concepts which may be implemented using conventional computing technology. Accordingly, I cannot agree with the applicant’s contention that the technique defined by the claim represents a “technical improvement”.
The applicant also refers to the eBay decision where at paragraph [42] the Delegate determined that the claimed invention of eBay was a manner of manufacture because the consideration that “is the contribution of the claimed invention technical in nature…” and “…does the application of the method produce a practical and useful result…” are fulfilled. The applicant applies this to the present application stating that it is the “…the contribution of the combination of technical features [sik, the scan, OCR and analysis of a fee agreement term] is technical in nature” and thus submits the claimed invention is a manner of manufacture.
I note that the facts of the case in eBay are different to the present case. In eBay the delegate identified that obtaining congestion information during the course of an event is a technical problem requiring a technical solution. However, I am not persuaded that there is a patentable invention in the present application. The applicant submits that it is the system to “scan[ning] and perform[ing] optical character recognition on another fee agreement, analyz[ing] the another fee agreement” that is a combination of features that is technical in nature. Whilst bringing these computer systems together is technical from a computing sense, I am not persuaded that this is where the invention lies. As I have explained above, the manual scan, OCR and analysis of a document for a term is a well-known computational process that is performed manually. The improvement identified by the applicant is that by automating this process there are alleged benefits. I consider these benefits to lie in the realm of administration and business process, they are not physical tangible benefits. Thus, I do not believe the invention is the computing solution per se, but the decision to automate a manual administrative process.
Balance of considerations
Having regard to the invention as defined in claim 1 and the above considerations, I conclude that the substance of the invention is an administrative scheme to create a financial fee agreement using templates, data provided by a user, and data extracted from another source. The functionality provided by the scan/OCR/analyse step is certainly interesting and of benefit to customers. However, the complete absence of technical details means I cannot place much weight on there being a technical problem or improvement and I must conclude that the claimed system solves a business problem through a business innovation rather than a technical innovation. There is nothing in the specification to suggest that anything more than generic or standard implementation in a computer is required. In accordance with the Full Court authorities discussed previously, this is not patentable subject matter.
The scope of claim 3 is substantially similar in nature to claim 1. The difference in claim drafting is simply that claim 3 is a system that performs the method made up of identical elements as per claim 1. Hence the substance of claim 3 is the same as claim 1 and therefore claim 3 is also not for a manner of manufacture.
I have also considered each of the dependent claims. The applicant has made no specific submissions regarding the appended claims. The dependent claims simply define the scheme of the independent claims in more detail by defining data types for the fee agreements, such as type of fee agreement or billable rates. None of the dependent claims add anything of substance that fundamentally escapes the patentability issues of the independent claims. It follows that none of the dependent claims are for a manner of manufacture.
As noted above, the description describes the technical implementation of the invention and the embodiment to a high degree of generalisation. As such I do not consider there to be any material in the description that could provide the claimed invention with a manner of manufacture if made the subject of a claim.
Conclusion
None of the claims are for a manner of manufacture. In addition, I see no material in the application that could be made the subject of a claim so as to result in that claim being for a manner of manufacture. I therefore refuse the application.
Mr Kevin Restrick
Delegate of the Commissioner of Patents