Do you hear what I hear – musical patent less than clear as a bell

Peter Heerey AM, QC, Tom Cordiner & Alan Nash
Correspondents for South Australia, Victoria and Western Australia

Note: Where any of the barristers were involved in a case reported below and the matter is still running, or potentially so, the other correspondents have taken the role of reporting that case.

Lisica v Commissioner of Patents [2014] FCA 433 7 May 2014

The applicant sought to patent an invention, the first claim of which (and on which the remaining claims were dependent) was expressed in the following terms:

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. 

Doing the best he could, the delegate of the Commissioner of Patents summarised the “invention” as being a “method of making some kind of mathematical transformation of the partials and harmonics of the [natural harmonic series] to generate some new musical scales.”  The delegate concluded that the claimed invention was not a method of manufacture, because it was concerned with the “fine arts rather than the useful arts” and the computer program at the heart of claim 1 resulted only in the generation of “intellectual information” rather than any practical and useful result in a physical device.  The delegate also considered that the invention would be unlikely to comply with section 40(2) of the Patents Act because it was “so poorly described”.

On appeal to the Court, the applicant did not seek to lead any expert evidence, which might have explained the area of the useful arts to which his invention would make a contribution or at least assist in understanding the language of the specification and the claims.  Justice Jessup concluded that in those circumstances, the claim set out above, was neither clear nor succinct as required by s 40(3) of the 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.”  His Honour echoed the view expressed by the delegate that the applicant’s attempt to draft the specification and claims without professional assistance, had not helped him.

However Justice Jessup was not prepared to find that the invention was not a method of manufacture, , because his Honour had not been able to understand enough about the invention to sustain the positive conclusion.  His Honour also was somewhat critical of the failure by the Examiner and delegate to inform the applicant that they had been unable to open some of the electronic files accompanying his application, the content of which might have addressed some of the delegate’s concerns arising under section 40(2) of the Act.

Peter Heerey QC – CommBar profile

Alan Nash – CommBar profile

Tom Cordiner – CommBar profile

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