Australia now has two appeal court decisions on the patentability of computer implemented inventions. This has started to bring much-needed clarity to an issue surrounded by uncertainty for several years.

The legal principles have now been made reasonably clear and align largely with principles applicable in the United States (as set out in Alice Corporation).

In short, computer implemented methods can be patented. However, in order to be patentable, they must do more than simply implement a mere scheme or method on a computer, using its well-known and understood functions and capabilities.

The relevant principles

The relevant principles were consistently identified in both discussed in Research Affiliates LLC v Commissioner of Patents and in Commissioner of Patents v RPL Central. The High Court on 5 May 2016 declined to hear an appeal on the decision in RPL Central, stating that the decision was "plainly correct".

The principles and considerations that the Court identified are as follows:

  • the claimed invention must be looked at in substance, not form
  • a scheme or business method is not excluded from patentability, but it must be more than that in order to be patentable
  • it is not patentable to merely put a business method into a computer where the computer is used only for its well-known and understood functions. In order to be patentable there must be an invention in the way in which the computer carries out the scheme or method. This requires some ingenuity in the way the computer is used
  • the fact that a method could not be carried out without a computer is not enough to confer patentability
  • it is necessary to ascertain whether the contribution to the claimed invention is technical in nature
  • one consideration is whether the invention:
    • solves a technical problem within the computer or outside the computer; or
    • results in an improvement of the functioning of the computer
  • does the method merely require generic computer implementation?
  • is a computer merely the "intermediary", configured to carry out the method, but adding nothing to the substance of the idea?

The difficulty that now arises is not identifying the correct legal principles, but rather in how to characterise a claimed invention in order to properly apply the principles. The recent decisions in RPL Central and Research Affiliates give some guidance on how these principles are to be applied.

Research Affiliates

In Research Affiliates, the Court considered a claimed invention for a computer-implemented method of generating an index for weighting an investment portfolio.

The claimed invention

The method used measures other than share price weighting or market capitalisation weighting to generate the index. The steps involved were:

  • accessing data relating to assets
  • processing the data to identify assets for inclusion in the index (based on measures other than share price or market capitalisation)
  • accessing a weighting function to weight the assets
  • applying the weighting function to assign a weighting to each asset (based on measures other than share price or market capitalisation) to generate an index

The method had been found not to be patentable by the Patent Office and, in an appeal from the Patent Office, by a single judge of the Federal Court.

The invention "in substance"

In considering the invention, the Full Federal Court considered that the invention set out in the specification was directed to the index itself. The subject matter of the invention was, in substance, the scheme, or the idea, for the creation of the index. Although the claimed method could be implemented in a computer, the ingenuity of the inventors was directed to the idea, which is not patentable.

In coming to this conclusion, the Court also noted there was no suggestion in the specification or the claims that any part of the inventive step resided in the computer implementation. Rather, it was apparent that the scheme is merely implemented in a computer, and a standard computer at that. No part of the method involved an improvement in computer technology.

As a result, the Full Federal Court found that the method was not patentable.

RPL Central

RPL Central was a considerably more difficult case. While the method in Research Affiliates was held not to be patentable at every stage, RPL Central produced differing results before different courts.

The claimed invention

The invention in RPL Central was a method of assessing a user's competence and eligibility against a set of assessment criteria. Broadly, the steps of the method were:

  • using a computer to retrieve assessment criteria for a recognised qualification using the Internet
  • the computer processes the criteria to generate corresponding questions relating to the competency of the individual
  • those questions are presented to an individual
  • the individual answers the questions and, if he or she chooses to do so, uploads documentation from his or her computer

The Patent Office initially found that the invention was not patentable. On appeal to a single judge of the Federal Court, the invention was found to be patentable. The case was then appealed to the Full Federal Court.

As was noted by the Court, this was not a straightforward case. It was not a case where a computer simply processed information entered by a user by using an algorithm. Nor was it merely retrieving information from the Internet in response to a user's request.

A key aspect of the invention considered was the generation of questions from the assessment criteria, including asking a user for relevant attachments. However this was seen as merely an act of programming to allow a series of predetermined words to be added to the existing information to turn a statement into a question.

The invention "in substance"

The invention was, in substance, seen to be a method of taking information regarding assessment criteria, reframing this information as a question, presenting the questions to

user and receiving an answer. There was not seen to be any ingenuity in any operation of the computer. The steps required to implement his method on a computer were well within the normal use of a computer. The only ingenuity was in the steps of the method itself. The claimed invention was therefore not patentable.

So what is patentable?

While these two decisions provide some clearer guidance on how to determine whether a computer implemented method is patentable, there has still been no recent decision proving what is patentable.

Historically, the following have been found patentable in Australia:

  • computer processing apparatus for assembling text in Chinese language characters (1994)
  • the production of an improved curve image by computer (1991)
  • writing information to a smart card as part of a customer loyalty program (2001)

These cases are, in the context of computer technology, quite old. One of the factors to be considered is whether a computer is used only for its well-known and understood functions. The "well known and understood functions" of a computer have evolved significantly since these decisions. Therefore, these are of limited use as examples of the types of computerimplemented methods that would be patentable today.

In RPL Central, the Court distinguished the method claimed from the situation where a computer was evaluating information to provide an answer, or functioning in the nature of an adviser or an artificial intelligence. In light of these comments, it is clear that software or computer implemented methods remain patentable in Australia. However, the patentee will have to invest more in the preparation of their patent application to show that the invention meets the new, more stringent standard for patentability.

What is patentable?

  • Methods where a computer evaluates information and provides an answer
  • Computers functioning in the nature of advisors
  • Computers as artificial intelligence