On 11 December 2015 Australia’s Federal Court handed down its decision in the RPL Central1 appeal – a case dealing with the patentability of computer implemented inventions in Australia.
The Court overturned the first instance decision and found that the invention in question does not satisfy Australia’s subject matter eligibility requirements.
The Court was also careful to note, however, that not all computer implemented inventions would lack subject matter, and that inventions need to be considered on a case-by-case basis.
RPL has until 8 January 2016 to apply for special leave to appeal the decision to the High Court.
RPL’s Australian innovation patent 20091006012 describes and claims a computer implemented method for assessing the competency or qualifications of individuals with respect to recognised standards.
In the first instance decision, Justice Middleton held that the claimed invention was patentable subject matter.3
On appeal, the Federal Court reached the conclusion that, despite being computer implemented, the substance of the invention is a scheme or business method and not properly the subject of letters patent.4 It is clear from the decision, though, that computer implemented inventions need to be considered on a case-by-case basis, and are not inherently unpatentable.
There was some hope that the RPL decision would provide clearer guidance on how to assess the patentability of computer implemented inventions. While the decision provides a number of pointers for identifying both patentable and unpatentable computer implemented inventions, there are still many uncertainties in this regard.
In the last few years two cases of importance to computer implemented inventions have been heard by the Full Court of Australia’s Federal Court: the Research Affiliates5 appeal and the RPL Central appeal.
In both cases the question being considered was whether a computer implemented invention was patent eligible subject matter – or, in Australian terms, a “manner of manufacture”.
In the Research Affiliates case, the Full Court considered claims directed to operation of a general purpose computer to generate an index for use in passive investing. These claims were held not to be patentable subject matter in both the first instance decision and the appeal.6 The Court found that any inventive step in the claimed method arises in the creation of the index as information and as a scheme, not in the computer implementation.
The Research Affiliates decision is, arguably, of quite limited application. This can be seen, for example by considering the Court’s formulation of the question being considered:
In essence, this raises the question of whether computer implementation of an otherwise unpatentable business scheme is sufficient to make the claimed method properly the subject of letters patent.7
Despite this narrow ambit, the Australian Patent Office has been using the Research Affiliates decision to support subject matter objections against a variety of inventions that involve computer implementation at some level – whether those inventions can be considered “otherwise unpatentable business scheme[s]” or not. This extension of the reasoning in Research Affiliates has imposed significant additional cost on applicants over the last few years.
The innovation patent considered in the RPL Central case relates to the assessment of an individual’s competency or qualifications against recognised standards.
Claim 1 of the RPL’s innovation patent is directed to:
“A method of gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard …”
The steps of the claimed method involve using a computer to retrieve information via the internet from a remote server, processing the information to automatically generate a corresponding set of questions, presenting the questions to a computer of an individual, receive responses from the individual, and transferring files from the individual’s computer. The invention considered in RPL Central resides in a combination of steps, unlike the computer implemented scheme for generating an index considered in Research Affiliates.
The RPL decision
In a joint decision, the three judges sitting on the RPL appeal found that the claimed invention lacked patentable subject matter.
The Court also noted, however, that not all computer implemented inventions – or even all computer implemented business methods – would also be unpatentable:
The fact that it [a claimed invention] is a scheme or business method does not exclude it from properly being the subject of letters patent …8
A computer-implemented business method can be patentable where the invention lies in the way in which the method is carried out in the computer. …9
The RPL decision sets down a number of considerations to be taken into account when assessing the patentability of computer implemented inventions. Many of these considerations were taken from the Research Affiliates decision mentioned above (which is not surprising given the RPL Central and Research Affiliates appeals were both heard by the same three Judges).
Despite the various factors considered, no bright-line test for assessing the patentability of computer implemented inventions emerges from the decision. In this regard the Court itself states that:
It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent.10
Considerations for computer implemented inventions
In the RPL decision the Court drew a distinction between the employment of an abstract idea and the idea itself and stated:
A technical innovation is patentable; a business innovation is not, …11
Even this general proposition, however, must be read with caution – as is illustrated by the rest of the same sentence:
A technological innovation is patentable; a business innovation is not, although a business method may be the subject of letters patent.
As a general proposition, where a technical contribution can be established there should be strong arguments for patentability. This seems to be the case even if the underlying idea of the invention relates to a business method. This is, of course, starting to sound like the European test for subject matter eligibility.
The RPL decision outlines various factors capable of lending support to a finding of a “technical contribution” (and, accordingly, patent eligible subject matter). These include:
- The contribution of an invention solving a "technical" problem within the computer or outside the computer.
- An invention resulting in an improvement in the functioning of the computer, irrespective of the data being processed.
- An invention which involves steps or algorithms that are “foreign” to the normal use of computers.
- The ingenuity of the invention is represented by a physical phenomenon in which the effect may be observed, rather than in a scheme.
- The solution provided by the invention exists irrespective of the data being processed.
- The solution provided by the invention involves more than the utilisation of well-known functions of a computer.12
Conversely, factors that appear to go against an invention being patentable subject matter include:
- A method that merely requires generic computer implementation.
- Where a computer is merely an intermediary, configured to carry out an invention but not adding anything to the substance of the idea.
- A method that does not include any steps that are outside the normal use of a computer.
- Statements in the specification that steps in the process can, in alternative embodiments, be implemented manually or offline.13
These considerations raise their own issues of interpretation. For example, it is not at all clear what does or does not constitute a “technical problem” or an “improvement in the functioning of a computer”. Nor is it clear what types of steps will be considered foreign to the “normal use of a computer”. It is perhaps for this reason that the Court was careful to note that the issue of patent eligibility needs to be considered on a case-by-case basis.
From here …
RPL Central may yet apply for special leave to appeal the decision to Australia’s High Court.
Absent such an appeal (and leave for the appeal being granted), there still seem to be many uncertainties and many unanswered questions with respect to the patentability of computer implemented inventions in Australia. With the Federal Court adopting a case by case approach, it may be many years before the uncertainties are resolved.