Jenni Lightowlers March 28 2016 Let's get physical? Software patentability in Australia FAL Lawyers | Intellectual Property - Australia Jenni Lightowlers Intellectual Property IntroductionPatent applicationPrior proceedingsFull Court decisionCommentIntroduction In the last few years three subject matters have been lurking on the fringes of patentability: methods of treatment, genes and software. The US Supreme Court has confirmed that, at least for the moment, none of these is eligible for patent protection.(1) In Australia, the High Court recently considered methods of treatment (which are generally patentable)(2) and isolated naturally occurring genes (which are not).(3) Now the High Court may have the opportunity to consider the extent to which software is properly the subject of patent protection in Australia.Patent applicationRPL Central Pty Ltd's patent application was aimed at streamlining and improving several aspects of the recognition of prior learning (RPL) process within the Australian vocational education and training sector.The RPL process allows individuals who have previous work experience or education in a particular field to gain a qualification without having to enrol in and complete the full equivalent course at a training organisation. As not every training organisation has approval to deliver and assess every course or qualification, there is no single point of access to the RPL process. This makes it difficult for an individual to obtain a qualification whose requirements he or she has already met.At its most basic level, the patent provided a system for compiling and collating all relevant data pertaining to the 3,500 Australian qualifications and distilling the relevant performance criteria for those qualifications into a series of questions. An individual could log onto this system through the Internet, select his or her qualification and then answer the questions as required. There was also provision to upload supporting documentation.Prior proceedingsIn opposition proceedings, a delegate of the commissioner of patents decided that none of the claims related to "a manner of manufacture" within the meaning of Section 18(1A)(a) of the Patents Act 1990 (Cth). This was because the patent lacked a "physical effect".(4) RPL Central appealed.Justice Middleton heard the appeal in 2013, focusing on whether the patent had the requisite "manner of manufacture".(5) He considered the development of the law in regard to manner of manufacture, and focused particularly on the seminal cases of National Research Development Corporation (NRDC) v Commissioner of Patents(6) and Grant v Commissioner of Patents.(7)Middleton held that the invention gave rise to a physical effect or phenomenon and was therefore a product or an artificially created state of affairs. The physical effect in question was "a new and useful effect which may be observed" – that is, the creation of questions from the qualifications data retrieved from a third-party server. Middleton also seemed to suggest that the input of responses to those questions by an individual would create an additional physical effect or artificial state of affairs. He therefore approved the patent application. The commissioner appealed.Full Court decisionBetween Middleton's decision and the Full Court hearing, the decision in Research Affiliates LLC v Commissioner of Patents was handed down.(8) This proved crucial to the resolution of the appeal.Justices Kenny, Bennett and Nicholas (the same three judges who decided Research Affiliates) of the Full Court reversed Middleton's decision, holding that RPL Central's patent was not patentable on the basis that it was a business method or mere scheme.The court held that the fact that a method cannot be carried out without a computer does not render a claim patentable on its own. Something more is needed, particularly if the invention merely uses the routine functions of a computer. The court also cited Research Affiliates in de-emphasising the centrality of the computer in RPL Central's patent.The court also noted that because RPL Central claimed no invention in the software or program itself, any inventiveness must lie in the steps of the method (ie, the process by which an individual uses the system described). The court held that the idea of presenting performance criteria in question form was exactly that: an idea. Thus, the court held that there was no "manner of manufacture" and allowed the commissioner of patents' appeal.CommentThe Full Court decision clarifies that software or related systems are not inherently unpatentable, provided that there is sufficient technical invention involved. It also makes clear that a case-by-case analysis is required.RPL Central has since filed an application with the High Court for special leave to appeal the Full Court decision. It is unclear at this early stage whether that leave will be granted.If the High Court were to provide guidance on this issue, it could clear up an important and unresolved area of Australian patent law. The High Court may also wish to consider the Australian position on software patents in light of other jurisdictions, such as the United States. The extensive discussion of both US and UK authorities in the various proceedings would give the High Court scope to do so.For further information on this topic please contact Jenni Lightowlers or Julian Ryan at FAL Lawyers by telephone (+613 9642 2252) or email ([email protected] or [email protected]). The FAL Lawyers website can be accessed at www.fal-lawyers.com.au.Endnotes(1) See Mayo Collaborative Services v Prometheus Laboratories Inc, 132 S Ct 1289 (2012), Association for Molecular Pathology v Myriad Genetics Inc, 133 S Ct 2107 (2013) and Alice Corp v CLS Bank International, 134 S Ct 2347 (2014), respectively. The decision in Alice Corp may not be as preclusive as first though: see DDR Holdings LLC v Hotels.com LP, 773 F.3d 1245 (Fed Cir 2014).(2) Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd  HCA 50 (December 4 2013).(3) D'Arcy v Myriad Genetics Inc  HCA 35 (October 7 2015).(4) Commissioner of Patents v RPL Central Pty Ltd  FCAFC 177 (December 11 2015), at .(5) RPL Central Pty Ltd v Commissioner of Patents  FCA 871 (August 30 2013).(6) (1959) 102 CLR 525.(7) (2006) 154 FCR 62.(8)  FCAFC 150 (November 10 2014).