In its long awaited decision Commissioner of Patents v RPL Central, the Full Federal Court has rejected another computer-implemented invention for failing to constitute patentable subject matter. In doing so, Justices Kenny, Bennett and Nicholas overturned the decision of the trial judge, Justice Middleton, delivered in August 2013.
The decision has implications for any software developers.
The invention in question related to a computer-implemented method and system “for assessment of the competency or qualifications of individuals with respect to recognised standards”. The court characterised claim 1 of the patent as involving the following steps:
- a user retrieves competency/qualifications criteria from the Internet using conventional web-browser software;
- the computer processes the criteria to generate corresponding questions;
- those questions are presented to the user; and
- the user answers the questions and, if he or she chooses to do so, uploads documentation from his or her computer.
The key question was whether the implementation of this business method using a computer was sufficient to transform it into a patentable invention. The patent applicant argued that the computer was essential to the claimed invention, and that it was not practical to perform the method without using a computer. It described the advance as being one in computer technology, and so argued that it related to patentable subject matter. The primary judge had agreed with this argument, finding that the computer was so inextricably linked with the claimed invention.
On appeal, however, the Full Court emphasised that the question of patentable subject matter should be approached as a matter of substance, rather than form, consistent with other recent appellate decisions in Myriad and Research Affiliates. It addressed the issue by characterising the contribution made by the invention as an unpatentable business method or idea, and then found that the implementation of the invention did not involve an improvement in computer technology. The fact that the computer was essential or integral to implementing the scheme was not sufficient to transform it into a patentable invention.
Specifically, RPL Central's invention was characterised as the business method of taking information and reframing it into questions, which could be presented to the user to answer. The Court found that the computer was merely operating as an intermediary in this process. Essentially, the business method could be implemented using merely standard or generic operation of computers, and so was not patentable. The Court did acknowledge that RPL Central's invention included the additional contribution of 'reframing of the criteria into questions' which may be outside the generic use of a computer, but that this was also merely an unpatentable 'idea' which was 'easily programmed'.
This decision confirms that the current position in Australia is that business method inventions are difficult to protect, even if implemented using computer software. From an international perspective, differences between the positions in the United States, Europe and Australia continue to shrink – patent applicants can now reasonably expect more similar findings in all of these jurisdictions.
We are still waiting for our courts to find an invention patentable under the test set out in Research Affiliates and RPL Central, which would further clarify the position for patent applicants. On appeal, the Full Court emphasised that some computer-implemented inventions would be patentable, and even some business methods, if there was ingenuity in the way the computer was utilised. However, the Full Court acknowledged that inventions found to be patentable in older cases (IBM and CCOM) could be characterised in a way that might be unpatentable under the current test, and did not elaborate on how these earlier inventions were nevertheless patentable.
RPL Central can of course still seek special leave to appeal the decision to the High Court, which, if leave was granted and the appeal proceeded, would likely resolve this issue in the short term at least.