On 30 August 2013 the Federal Court of Australia held that a computer implemented method was patentable subject matter.
The invention claimed is a computed implemented method designed to remove certain barriers in the processes associated with obtaining qualifications on the basis of Recognition of Prior Learning (RPL) in the Australian Vocational Education and Training (VET) sector.
The proceeding was an appeal from a decision of the Commissioner of Patents (Commissioner) to the effect that none of the claims of the invention were patentable because they did not constitute a manner of manufacture.
Justice Middleton held that the invention claimed was a manner of manufacture, finding:
- the invention produces a useful result in the field of education, by overcoming the difficulties involved in seeking out relevant education providers and obtaining qualifications by RPL; and
- each of the computer-effected steps in the invention “gives rise to a change in state or information in a part of the machine, and therefore produces a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation”.1
The invention in issue is contained in Australian Innovation Patent No 2009100601 in the name of RPL Central Pty Ltd (RPL Central). The invention claims a computer implemented method by which questions are generated from retrieved data and then presented in a format which can be answered by an individual entering responses and uploading supporting information from the individual’s own computer. The individual’s responses to the automatically-generated questions evidence their existing competencies. The responses are collated and stored and then provided to a relevant training organisation for the purpose of assessing whether the individual should obtain a qualification by RPL.
The claims of the innovation patent
Claim 1 of the patent relates to a method of gathering evidence for the purpose of assessing an individual’s competency relative to a recognised qualification standard, which includes the following steps:
- retrieval of assessable criteria from a remotely located server via the internet;
- processing the assessable criteria to automatically generate questions relating to the competency of an individual;
- an assessment server presenting the automatically generated questions via the internet to a computer of an individual user; and
- receiving from the individual user via their computer a series of responses to the automatically-generated questions and any supporting evidence.
The remaining independent claim, claim 5, was in similar terms.
Relevant legal principles
The principal issue before the court was whether the invention claimed constituted a manner of manufacture.2 The invention had otherwise been found to be novel and inventive before the Patents Office.
Manner of manufacture is a threshold requirement for patentability. The decision of the High Court in National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 (NRDC) sets out the principles for determining what constitutes a manner of manufacture.3 Applying NRDC, a method or process will be a manner of manufacture if it results in the production of some “vendible product”.4 A product will be “vendible” if it has utility in practical affairs.5 A “product” need not be a thing in the sense of an article, it includes every end produced.6 A result or an outcome will be a “product” if it consists in an artificially created state of affairs.7 The Full Court in Grant v Commissioner of Patents (2006) 154 FCR 62 (Grant) further elaborated upon this point, finding a “physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required”.8
Justice Middleton observed that any attempt to define a set of prescriptive requirements for what is a “manner of manufacture” is not permissible on the approach of the High Court in NRDC. The NRDC approach is a flexible one. Further, any court considering the question of whether an invention is a manner of manufacture should keep in mind that while it is dealing with a threshold consideration, any validity inquiry remains to be determined quite separately. His Honour said it was “unnecessary to introduce rigid criteria into this 'manner of manufacture' inquiry, when the policy of the patents legislation can also be implemented through the application of the distinct grounds of invalidity set out therein”.9
Was the claimed invention patentable subject matter?
Justice Middleton held that the claimed invention was a manner of manufacture and thus patentable subject matter, finding:
- the claimed invention produces a useful result and satisfies the “vendible” requirement: it overcomes the difficulties involved in seeking out relevant education providers, and enables recognition of prior learning. It does so in a field of economic endeavour, being the educational sector of the economy; and
- the claimed invention produces a “product” in that it gives rise to an artificial state of affairs or a physical phenomenon in which a new and useful effect may be observed. In particular, the computer programmed in accordance with the claimed invention operates to process the retrieved information (assessable criteria) and to automatically generate data (questions). The questions are presented to the user along with other user interface elements which implement an online form suitable for the receipt of responses to those questions. An assessment server is programmed, again in accordance with the claimed invention, to present the form to the individual user’s computer. The form provides for user-entered responses and the uploading of files. Each of the computer-effected steps “gives rise to a change in state or information in a part of the machine, and therefore produces a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation”.10
Justice Middleton was not moved by the Commissioner’s argument that the “concrete effect or phenomenon or manifestation” referred to in Grant must be “significant” or “central to the purpose” of the claimed method. His Honour said NRDC, CCOM11 and Grant do not import any requirement of substantiality or centrality of physical effect.12
Justice Middleton also rejected the Commissioner’s submission that if one “stripped away the computer aspects of the claim, one would be left with ‘a method for performing an aspect of a business’”.13 His Honour found the magnitude of the task performed by the invention and the terms of the claims make it clear the computer is an essential part of the invention because it “enables the method to be performed”.14
What does the decision mean?
- The decision provides further support for the proposition that computer implemented inventions are patentable.
- It provides a useful counterpoint to the decision of Justice Emmett in Research Affiliates LLC v Commissioner of Patents  FCA 71, which we reported in the May Edition of our Intellectual Property Update. In Research Affiliates, a computer implemented method of constructing and preparing an index for a portfolio of investments weighted according to certain criteria was found not to be a manner of manufacture because the index generated was merely information. It did not involve a specific effect being generated by a computer. That decision is currently on appeal.