RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871, 30 August 2013

In an emphatic and clear judgement,1 the Federal Court has dismissed a negative practice the Australian Patent Office had adopted towards certain types of computer implemented inventions.  The Court found that an automated process for gathering evidence to assess competency did constitute patentable subject matter.

Background to patent eligibility

Patent eligible or patentable subject matter in Australia is inexorably linked to the High Court's celebrated judgement in NRDC2 which has been described as a watershed.3

In this appeal, the Federal Court confirmed NRDC made it clear any attempt to set forth prescriptive requirements is impermissible as it is necessary to be flexible to allow for excitingly unpredictable and emerging inventions to be patentable.4 NRDC considered an exact formula was not to be used, as patentable subject matter is a mere threshold consideration, particularly when any validity inquiry remains to be determined quite separately, and on different criteria,5 e.g. novelty and inventive step.

RPL Central's invention

The invention under consideration facilitated improvements in existing recognition of prior learning processes by enabling the automatic generation of a user interface to gather evidence from a prospective candidate, relevant to credit or exemption towards any qualification or unit offered across a wide range of training organisations.  The evidence facilitated the assessment of the competency of the candidate6.

The main claim 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:

  • a computer retrieving via the internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
  • the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
  • an assessment server presenting the automatically-generated questions via the internet to a computer of an individual requiring assessment; and
  • receiving from the individual via their computer a series of responses to the automatically-generated questions, the responses including evidence of the individual’s skills, knowledge and experience in relation to each of the elements of competency and performance criteria, wherein at least one said response includes the individual specifying one or more files on their computer which are transferred to the assessment server.7

The Australian Federal Court's decision in favour of RPL Central

The Court considered and rejected all of the Commissioner of Patents' submissions.

In applying the principles of NRDC, the Court found that the invention did belong to the useful arts rather than the fine arts, and that it did have utility in practical affairs and solved a problem in the field of economic endeavour.8  The Court also made clear that there was no binding Australian authority that provides a different test for a method claim as opposed to a method and device claim.9

Significantly, the Court found that each of the computer-effected steps of the claimed invention constituted or gave rise to a change in the state or information in a part of a machine, and therefore produced a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation, as required by the Court's decision in Grant.10  The Court considered the statement in Grant to be a useful précis of the way in which the artificial state of affairs requirement may apply to computer programs, in accordance with the principles set out in NRDC.11

Furthermore, the Court emphatically rejected the Commissioner's arguments that the physical effect required must be significant or central to the purpose or operation of the claimed process.  The Commissioner felt that this requirement was supported by earlier decisions. In fact the Commissioner has been applying the requirement to reject a number of patent applications for computer implemented inventions relating to financial systems or gaming systems.  The Court made it clear that none of the earlier decisions articulated a separate or new requirement of substantiality of physical effect.12

The Court noted the Commissioner submitted that without this, or some other limiting principle, then any method operated on a computer would fulfil the artificial state of affairs requirement.13  However the Court indicated that fear is not a valid objection.14

The Commissioner also submitted that the invention could be performed without the use of a computer, and if one was to strip away the computer aspects of the claims, one would only be left with a method for performing an aspect of a business.  In response the Court said one should not subtract from the invention any aspect of computer implementation, and then determine whether what remains is proper subject matter.15  The computer is an essential part of the invention claimed, as it enables the method to be performed.16

Another argument advanced by the Commissioner, that the steps did not involve anything that is foreign to the normal use of computers, was also rejected by the Court as a requirement not imposed by any of the binding authorities.17This is to be considered under the separate requirements of novelty and inventive step.

The Court also distinguished its earlier decision in Research Affiliates18on the basis that the patent applicant had accepted the only physical result generated by the method of the claimed invention was a computer file containing a generated index, and that the specification and the relevant claims did not disclose how to produce the index in question.19  In contrast, the specification and claims in issue in this case provided significant information about how the invention is to be implemented by means of a computer and the computer was integral to the invention as claimed.20

Key lessons for software patents in Australia

  1. The decision reaffirms once again that software patents are available in Australia.
  2. The negative practice that the Australian Patent Office had adopted towards certain types of computer implemented inventions, such as financial systems or gaming systems, did not have a sound basis in Australian law, and was incorrect.