The Full Federal Court (“Full Court”) handed down a much-anticipated decision in the appeal by the Commissioner for Patents of Commissioner of Patents v RPL Central Pty Ltd.1 In a unanimous decision, the appeal was allowed, and Australian Innovation Patent No. 2009100601 (“the Application”) was found not to be for patentable subject matter.
The claims of the Application were directed to gathering evidence relevant to an assessment of an individual's competency relative to a recognised qualification standard. The Court interpreted the steps of claim 1 as follows:2
- using a computer to retrieve the criteria using the Internet. This involves the user using conventional web-browser software;
- the computer processes the criteria to generate corresponding questions relating to the competency of the individual to satisfy the elements of competency and performance criteria associated with the recognised qualification standard;
- those questions are presented;
- the individual answers the questions and, if he or she chooses to do so, uploads documentation from his or her computer.
The appeal did not challenge whether the claims were directed to a useful result.3 Rather, submissions by the Commissioner for Patents relied on the Research Affiliates4 decision,5 asserting that programming of a computer is simply the ordinary task of the computer and thereby not patentable.6
The Full Court stated that a claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can be broadly described as an improvement in computer technology.7 The Full Court bench of Justices Kenny, Bennett and Nicholas, being the same as that for Research Affiliates, unsurprisingly relied heavily on Research Affiliates.8
The Full Court found it necessary to ascertain whether the contribution to the claimed invention is technical in nature.9 The basis for this test comes from Aerotel10 despite such relating to requirements of UK rather than Australian law.
The Full Court conceded that a computer-implemented business method may be the subject of letters patent if the invention lies in the way in which the method is carried out in the computer. However, even if the method could not be carried out without the use of a computer, this “cannot render the claimed invention patentable if it involves simply the speed of processing and the creation of information for which computers are routinely used”.11 Accordingly, the Full Court found it necessary to understand where the inventiveness or ingenuity was said to lie.12 The claimed method was found not to include any steps that are outside the normal use of a computer,13 and thus to relate to a scheme or business method.14 However, the Full Court did not seek to provide any guidance on what pertains to the “normal use of a computer”.
The claims in question were found not to lie on the boundaries of existing judicial development,15 and so distinguished from the recent High Court decision of D’Arcy.16
The requirements of novelty, inventive step and manner of manufacture have previously been found by the Full Court to relate to distinct requirements of a patentable invention.17 This distinction was echoed in Research Affiliates,18 but appears to have been blurred in this instance.
The Full Court appears to assert that central to the concept of patentability is where the ingenuity of the inventors is said to lie. Accordingly, it would seem advisable to clearly identify where the “ingenuity” of an invention is considered to lie, and how such relates to more than steps used during the normal use of a computer, when drafting specifications for computer-related inventions.
It will be interesting to see whether this decision is applied to non-computing inventions, for example mechanical apparatus formed from known components, or chemical methods that use known processing stages – will the ingenuity of the inventors be considered central to patentability of such inventions?