On 11 December 2015 a Full Court of the Federal Court of Australia delivered a unanimous judgment in the case of Commissioner of Patents v RPL Central Pty Ltd  FCAFC 177, overturning the primary judge’s decision and holding that RPL Central’s claims to a “method of gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard” did not represent patentable subject matter.
The complete decision is available here.
The decision cites, and appears to agree with, much of the reasoning provided in the US Supreme Court case of Alice Corporation Pty Ltd v CLS Bank International 134 SCt 2347 (2014). While refusing to deliver a bright line test, and although rejecting the patent claims in suit as lacking patentable subject matter, the Federal Court nevertheless made clear that computerised business methods remain patentable in Australia where technical invention can be demonstrated. At  the Court held that “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.”
At  the Court held: “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.”
RPL Central’s Australian innovation patent no. 2009100601, the subject of the present case, was initially granted and certified by the Australian Patent Office. It was then successfully opposed and invalidated by a delegate of the Commissioner of Patents on the basis that it was not a patent eligible “manner of manufacture” under s. 18(1A)(a) of the Patents Act 1990. The opposition decision was then overturned on appeal by Judge Middleton of the Federal Court, who held that the invention was a patent eligible manner of manufacture. Now, in the present decision a Full Bench of the Federal Court has reversed Judge Middleton’s decision.
The Full Bench of Judges Kenny, Bennett and Nicholas held that Judge Middleton in the primary case did not have access to the Full Court’s subsequent decision inResearch Affiliates LLC v Commissioner of Patents (2014) 227 FCR 378, which “drew a distinction ‘between, on the one hand, a method involving components of a computer or machine and an application of an inventive method where part of the invention is the application and operation of the method in a physical device and, on the other, an abstract, intangible situation which is a mere scheme, an abstract idea and mere intellectual information’.” (At , citing Research Affiliates at .)
The Court stated: “[t]o reiterate some of the matters discussed in Research Affiliates:
- It is necessary to ascertain whether the contribution to the claimed invention is technical in nature. In Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application  1 All ER 225, the subject matter was an interactive system whereby questions were asked, the answers incorporated in a draft and, depending on some particular answers, further questions were asked. It was held that, apart from the fact of running a computer program, there was nothing technical about the contribution and the method was for the business of advising upon and creating appropriate company documents.
- 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? In Alice Corporation, the method was for exchanging financial obligations in which the computer was used to create records, track multiple transactions and issue simultaneous instructions. The majority in the Supreme Court of the United States concluded that the use of the computer added nothing to the substance of the abstract idea of reducing settlement risk in exchanging financial obligations.” (At .)
The field of RPL Central’s invention relates to assessing the competency or qualification of individuals with respect to recognised standards. RPL Central’s innovation patent states:
“It is accordingly an objective of the present invention to provide an improvement to the existing situation through technological means. In particular, the invention recognises the need for an automated tool that can facilitate the centralised collection of assessment information from individuals, and provide improved access to RPL processes independently of a particular organisation (eg RTO or TAFE) that is chosen to issue a corresponding qualification or Statement of Attainment.…
Embodiments of the invention are advantageously able to automate the process of converting assessable criteria, possibly relating to many thousands or tens of thousands of training courses and units, into a more convenient “question and answer” format, that is able to guide an individual through the information gathering process. The responses of an individual to the automatically-generated questions may be collated and, for example, stored in a database, from where they may be provided (with or without further processing) to a relevant training organisation for the purposes of assessing the individual’s competency relative to the recognised qualification standard.
From the perspective of an individual user, embodiments of the invention are able to provide a single entry point from which they are able to identify and/or select specific relevant qualifications and units, provide information and evidence relevant to existing competencies, and initiate a recognition process, in a manner that is independent of the institution that is ultimately selected to perform the assessment and/or to issue a qualification.”
Claim 1 of the patent reads:
A method of gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard, including the steps of:
a computer retrieving via the Internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
an assessment server presenting the automatically-generated questions via the Internet to a computer of an individual requiring assessment; and
receiving from the individual via said individual’s computer a series of responses to the automatically-generated questions, the responses including evidence of the individual’s skills, knowledge and/or experience in relation to each of the elements of competency and performance criteria,
wherein at least one said response includes the individual specifying one or more files stored on the individual’s computer, which are transferred to the assessment server.
The Full Court stated:
“In summary, claim 1 involves:
- 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.” (At .)
Although the Full Court held that the above claim lacks patentable subject matter, the Court clarified that a proper patentable subject matter analysis of such a claim requires a close look to determine whether technical ingenuity, and thus patentable subject matter, is present. The Court held that “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.” (At .)
In summary, although the present decision is no doubt disappointing to those seeking the establishment of a much easier and relaxed test for finding patentable subject matter in business methods, this case does set out additional specific guidelines to assist in determining when business methods include patentable subject matter under Australia’s “manner of manufacture” test. Also, the apparent shift of this case toward further harmonization of Australian law with the law of the USA regarding the patentability of business methods will add some surety and consistency for patent applicants seeking protection in both jurisdictions.
The decision sets a deadline of 8 January 2016 for RPL Central Pty Ltd to apply for Special Leave to appeal the decision to the High Court of Australia.