FEDERAL COURT OF AUSTRALIA

Lisica v Commissioner of Patents [2014] FCA 433

THE COURT ORDERS THAT:

1.    The appeal be dismissed.

2.    The parties file and serve written submissions as to costs, as follows:

    (a)    the respondent, within 14 days;

    (b)    the applicant, within a further 14 days; and

    (c)    the respondent in reply, if necessary, within a further 7 days.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

1    This is an appeal, pursuant to s 51 of the Patents Act 1990 (Cth) (“Patents Act”), against a decision of a delegate of the Commissioner of Patents, made under s 49(2) of the Patents Act, to refuse to accept the applicant’s request and complete specification relating to his application for a standard patent. The appeal is in the original jurisdiction of the court, and proceeds as an appeal de novo: Imperial Chemical Industries Pty Ltd v Commissioner of Patents (2004) 213 ALR 399, 408-409 [49].

2    In his decision under s 49(2) made on 1 August 2013, the delegate concluded that the claimed invention was not a manner of manufacture, and that there was, therefore, a lawful ground of objection which had not been removed within the meaning of s 49(1)(b) of the Patents Act. The delegate agreed with the Examiner, whose report under Div 1 of Pt 2 of the Patents Act was dated 7 December 2012, that there was “no suitable claim” upon which to base a novelty or inventive step search. These matters, arising under s 49(1)(a) of the Patents Act, had not, therefore, been addressed. The delegate also expressed the view that the specification would be unlikely to comply with s 40(2) of the Patents Act, because the invention was “so poorly described”.

3    The specification for the invention commences with an abstract in the following terms:

THIS INVENTION is an auscultative method, the act of listening, that expounds upon the Natural Harmonic Series (NHS) for Music’s decipherability and attunement, herein introducing Programmatic Specificity for a new, innovative and useful Musical Instrument and Composition Engine that expresses and produces Energy, Frequencies, Wavelengths, Audio Genic Music and also included is a Sonic Biodynamical Brain Entrainment Bridge that is for Binaural Beats and an active being, in the place at which an attentive commitment is at the height of it’s [sic] fashion, where all of this is engineered, manufactured and irradiated from a vendible product, created by Mr Svetko Lisica’s operative method, theoremic composition and hithermost creation in new wisdom, sagacity, penetration, comprehension, intelligence and apperception for the NHS that is now resolved and established into a stable unit of measure in exactitude for a tuning medium, herewith this Invention is the state or fact of existence, a practical Universal Intonation System that belongs with Music, The Absolute and The Beyond.

4    There are ten claims in the specification, the first of which is fundamental. The remaining nine claims depend upon Claim 1. Claim 1 reads as follows:

An auscultative method that expounds upon the Natural Harmonics Series (NHS) and Mr Svetko Lisica’s Scientific Theory for Music’s decipherability and attunement, from the Invention’s Programmatic Specificity in a soniferous or visual realm for a new, useful, innovative and original Composition Engine and via its computations, providing the compositional harmonic materials that are put in the states of being manifested by the Invention’s unprecedented and original Musical Instrument and Sonic Biodynamical Brain Entrainment Bridge for Binaural Beats, into a stable unit of measure in exactitude for a tuning medium, herewith this Invention is the state or fact of existence, a practical Universal Intonation System that belongs with Music, The Absolute and The Beyond.

5    Although the specification is lengthy and detailed, the passages set out above will suffice to draw attention to a problem which confronted the delegate at the outset. In a section of his reasons headed “What is the invention?”, the delegate said that the invention was so poorly drafted that he was struggling to understand clearly what was the subject matter of the invention as described. Nonetheless, he made an attempt to understand the invention, and, eventually, expressed his view in the following terms:

18.    After reading the entire specification a few times, it appears to me that the heart of the invention lies in some kind of transformation of the partials, harmonics and frequencies in the natural harmonic series or scale to produce musical notes that when played will sound better. This is also supported by the provisional specification which I may add is drafted in language that is much easier to comprehend.

19.    The explanation of the programmatic specificity appears to describe various mathematical steps for making certain transformations to the partials in the NHS to thereby create new musical scales. However despite my best efforts to understand it I am unable to determine what exactly is this transformation. It appears to me that much of the new pitch partials that are mentioned in the description are still very much partials of the Natural Harmonic Series and I am therefore left wondering what transformation has taken place.

20.    It is also clear from the description that Mr Lisica has written some computer program which when run on a computer can perform this transformation of the Natural Harmonic Series. This computer program is said to be contained in the five program files that are mentioned in the description.

21.    In addition to the inventions “programmatic specificity” the description repeatedly refers to devices such as a new “musical instrument” a “composition engine” and “sonic biodynamical brain entrainment bridge for binaural beats”. However it totally lacks any further elaboration of what are these devices and how do they function. I suspect that the “musical instrument” and the “composition engine” may be nothing more than a computer that has been programed to create and play music using the transformed scale and the “sonic biodynamical brain entrainment bridge for binaural beats” may be some kind of headphones to listen to the music, but I am in no way certain.

22.    While there appear to be various aspects to the invention described, I would summarise the invention, as best as I can understand, as being a method of making some kind of mathematical transformation of the partials and harmonics of the NHS to generate some new musical scales.

6    In the hearing in court, I invited the applicant (who represented himself) to comment upon para 18 of the delegate’s reasons. He responded:

Theoretically it’s good. I believe that there is a transformation, not of the partial harmonics and frequencies. The Natural Harmonic Series, how I’ve applied my scientific theory and how I’ve applied my scientific theory in a manner that’s in an industrial manner as being part of – the transformation occurs as being part of my auscultative method. … These pitch partials from the Natural Harmonic Series, they don’t exist in the original harmonic series. There might be a few to begin with but the way I unravel the Natural Harmonic Series – none of them are present. They’re not in the original Natural Harmonic Series. So what I’m saying is I’m using the Natural Harmonic Series to base my scientific theory on and then expand upon its DNA.

7    Having identified the invention as best he could, the delegate proceeded to hold that it was not a manner of manufacture. This was based upon the views, first, that the invention, if there were one, was in the fine arts rather than the useful arts (National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252, 275), and, secondly, that the computer program which lay at the centre of the invention did not produce a practical and useful result in a physical device, but resulted only in “the generation of intellectual information in the form of a musical notation or scale that can be used in composing or playing music”.

8    This being an appeal de novo, the applicant was under no obligation to demonstrate error in the reasons of the delegate. Neither did he attempt to do so, at least by engaging with those reasons at a level of detail that would enable the court to understand the subject matter concerned and where the delegate was supposed to have taken a wrong turning. The applicant’s criticisms of the delegate – and of the Commissioner’s office generally – were of a different nature, and I shall mention one of them at the conclusion of these reasons. What is significant at this stage is that the applicant did not support his case in court by any expert evidence, such as might have, for example, explained the area of the useful arts to which this invention would make a contribution and assisted the court in understanding the language of the specification, and importantly, of the claims.

9    The claims are, of course, critical to the exercise in which the court is now involved. It is here that the applicant encounters what is, for a court operating without the assistance of expert evidence, a fundamental difficulty. In my view, Claim 1, set out above, is not clear and succinct, as required by s 40(3) of the Patents Act. As a statement marking out the area of the public monopoly which the applicant seeks, the claim falls well short of the standard of clarity required. The ground of objection referred to in s 59(c) is substantiated in relation to the claim. I do not, therefore, consider that there is no lawful ground of objection of the kind referred to in s 49(1)(b). I would exercise the discretion arising under s 49(2) adversely to the applicant.

10    As I have said, the other claims effectively incorporate the terms of Claim 1, and they too must, therefore, be rejected under s 40(3), with the same result under s 59 and s 49 to which I have referred above.

11    In this proceeding, the Commissioner advanced a number of other bases upon which the appeal should be dismissed. In one way or another, however, they all depended upon at least some understanding of what had been claimed. It was said, following the decision of the delegate, that the invention was not a manner of manufacture. For my own part, because of the lack of clarity in the claims, I have been unable to understand enough about the invention to sustain the positive conclusion that it is not a manner of manufacture. I would prefer to base my conclusion in the present appeal upon the applicant’s failure to cross the bar set up by s 40(3), rather than upon manner of manufacture or any of the other grounds advanced on behalf of the Commissioner.

12    For the above reasons, the appeal will be dismissed.

13    I would make two observations in concluding these reasons. First, the delegate observed that “the lack of professional assistance in drafting the specification and claims and in providing meaningful submissions has not helped the applicant”. I agree, and would reiterate the delegate’s comment in the context of the present appeal. From the submissions which the applicant made in court, the prospect that he has invented something of practical use which would satisfy the requirements of the Patents Act could not be dismissed as far fetched. However, in a complex and unusual area of human endeavour, the applicant has placed himself at a considerable disadvantage by attempting to achieve registration without assistance of the kind referred to by the delegate.

14    Secondly, a central feature of the applicant’s submissions in court was the failure of the examiner, and later of the delegate, to open four of the six files on the compact disc which constituted the applicant’s patent application. They opened only the files which were in “Word” format, from which they secured access to the terms of the specification and claims. That would have been sufficient for the delegate to have made a decision under s 40(3), but it is by no means obvious that he would have derived no assistance from the unopened files in relation to manner of manufacture. That is particularly so since, according to the applicant, the unopened files were incorporated by reference in the specification and contained working examples of the invention, thereby satisfying the requirement under s 40(2)(a) of the Patents Act that the specification describe the best method known to the applicant of performing the invention.

15    The unopened files were the subject of comment neither in the examiner’s report dated 7 December 2012 nor in the delegate’s decision which has led to this appeal. The report and the decision were made without the assistance of these files. It was only on the filing of an affidavit on behalf of the Commissioner in this appeal that the applicant was informed that the unopened files had not been viewed. The reason given for this omission on the part of the examiner and the delegate was that “IP Australia [was] unable to open the SCM files”. The files were so designated because they were named with the extension “.SCM”. The justification offered (in the affidavit) for the omission was that “SCM” files did not conform with IP Australia’s “Electronic Business Rules”. At the hearing of the appeal, counsel for the Commissioner did not maintain the submission that this was a satisfactory basis for omitting to open files which had been part of the applicant’s application. So far as appears from the affidavit, files with the extension “.doc” do not conform with the rules.

16    It may have required a modicum of ingenuity to open the SCM files – in a demonstration in court, the applicant himself did so. But the troubling aspect of the omission referred to above is not whether it was reasonable of the applicant to have expected the examiner and the delegate to open the files, but that the applicant was never informed of the difficulty which they were, apparently, experiencing, nor invited to remedy it. The examiner’s report was supplied to the applicant in the normal course, and it gave him no reason to suspect that four out of the six files which he had submitted had not been viewed or considered for such assistance as they may have provided in conveying the nature of the invention and how it was best performed. In that state of ignorance, the applicant made his submissions to the delegate, and he too dealt with the problems which the application involved without viewing all the files which constituted the application.

17    I do not suggest that the opening of the SCM files would necessarily have made a difference to the way the delegate decided the case. But the applicant was, in my view, entitled to have the whole of his application considered.

18    In the orders which accompany these reasons, I shall lay out a timetable for the making of written submissions on costs. I shall, of course, consider any submission which the Commissioner makes in that regard, but I think I should say at this stage that one issue upon which I would expect to be addressed in that submission is whether the circumstances most recently discussed above in these reasons should be considered relevant to such entitlement to costs as the Commissioner might otherwise have as the successful party in this appeal.

Associate:

Dated:    7 May 2014