On 30 August 2013, the Federal Court of Australia delivered a judgment on the patentability of computer implemented inventions: RPL Central Pty Ltd v Commissioner of Patents1.
In summary, Justice Middleton found claims directed to a computer implemented method were patentable subject matter and, more generally, that:
- a claimed invention must exhibit a “physical effect”;
- physical effects include computer implemented operations such as retrieving, processing, and/or presenting information;
- there is no requirement for a physical effect to be “substantial” or “central”;
- operations (e.g. processing information) which confer a physical effect need not themselves be new; and
- it is not permissible to strip away claimed features in search of an underlying invention.
Although Justice Middleton’s finding bodes well for the patentability of computer implemented inventions in Australia, the decision does not appear to sit particularly easily with Justice Emmett’s decision on patentable subject matter in Research Affiliates v Commissioner of Patents2 (also a single judge decision).
This being the case it will be interesting to see how the Full Federal Court decides the appeal to the Research Affiliates decision (set to be heard later this year), and how the Australian Patent Office handles computer implemented inventions in the interim.
RPL Central Pty Ltd is the owner of Australian patent 2009100601. Claim 1 of the 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 claimed method includes various computer implemented steps such as:
- a computer retrieving information via the internet from a remote server,
- the computer processing the information to automatically generate a corresponding set of questions,
- an assessment server presenting the questions to a computer of an individual;
- receiving responses from the individual; and
- transferring one or more files from the individual’s computer to the assessment server.
The Australian Patent Office raised and maintained subject matter objections to the application on several bases, all of which were dismissed.
Patent eligible subject matter
Referring the Australian decisions of NRDC and Grant3, Justice Middleton confirmed that under Australian law the relevant question with respect to subject matter eligibility is whether there is a product in the sense of an artificially created state of affairs, and whether that product has utility in practical affairs.
The question of utility in practical affairs was dealt with in short order, with the judge’s finding that the invention produced a useful result in a field of economic endeavour (the educational sector of the economy).4 The Commissioner of Patents’ argument that the claimed method was “merely intellectual information” was not accepted.
With respect to the requirement for a “product”, the judge reiterated the need for a physical phenomenon in which a new and useful effect may be observed. For the purpose of applying this requirement to computer programs, he adopted the position put forward in the Grant decision:
There is clearly a physical effect in this case, as there is a component that has been physically effected, or a “change in state or information in a part of a machine”.5
This was despite argument from the Commissioner of Patents that such a test was not part of the ratio of the Full Court’s decision in Grant, and not binding.
Under this test, the judge found that “each of the computer-effected steps of the invention constitutes or gives rise to a change in state or information in a part of a machine, and therefore produces a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation.”6 By way of example, Middleton J singled out that:
- “the retrieval from a remotely-located server by the computer via the internet … results in the creation of a physical effect by the writing of data in that computer.”7; and
- “a further artificially created state of affairs is created when the individual user inputs their responses, and these are sent to the [registered training organisation].8
No requirement that the physical effect be “significant” or “central”
One argument raised by the Commissioner of Patents was that in order to be patentable subject matter any physical effect must be “significant" and “central” to the purpose or operation of the claimed process.
Specifically, the Commissioner submitted that despite facilitating the claimed method, the claimed computer was not central to the operation of the invention but merely a common or convenient way to carry out the claimed method.9
The judge rejected this proposition, noting that no Australian authorities import any requirement of substantiality or centrality of physical effect.
The judge went on to state that even if there was a requirement of substantiality, the claims in question explicitly recited a computer and as such it should be considered substantial, central, or integral to each claim in any event.
In this regard the judge also commented that the Commissioner’s advocated approach of stripping away computer aspects of the claimed invention (to end up with an alleged “method for performing an aspect of business”) was not appropriate:
One should not subtract from the invention any aspect of computer implementation, and then determine whether what remains is proper subject matter of letters patent.10
Subject matter considerations should be subject matter considerations
In his decision, the judge also reiterated the fact that subject matter eligibility is only one of a number of validity criteria.
For example, the Commissioner raised a flood-gate type argument that if there was no ‘substantiality’ requirement of a computer to the claimed process, then any method operated on a computer would fulfil the artificial state of affairs requirement. The judge dismissed this notion, observing that each case would be assessed on its merits in light of ‘all relevant circumstances’.11
Further, and in response to the Commissioner’s argument that the claimed computing steps were not “foreign to the normal use of computers”, the judge strongly cautioned against any approach that introduces questions of whether a claim involves anything new and unconventional in a threshold subject matter enquiry.
In all, the decision is encouraging for those seeking protection of computer implemented inventions.
Precisely how encouraging, however, will depend on how the Patent Office proceeds in light of the decision, and how the Full Federal Court decides the Research Affiliates appeal.
Link to the decision: RPL Central Pty Ltd v Commissioner of Patents  FCA 871