[2021] FCA 31

Patents – amendment to overcome manner of manufacture objection – whether possible to overcome s 102 – whether the principle of finality should prevent iterative amendment applications

Astute readers will recall Repipe’s failed attempt to overcome a manner of manufacture objection raised by the Commissioner in respect of its patents for methods and systems for providing and receiving information for risk management in the field: Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956.

In that earlier case, McKerracher J found that the inventions were to a business method, which was inherently not patentable subject matter. The sense in which the claimed inventions were ‘technology driven’ was only that the business schemes used computers to implement a solution to a business problem, using standard computing functions to provide a non-standard solution. While specific software needs were required to achieve the invention, that was not the substance of the claimed inventions. Accordingly, the claims were not to patentable subject matter.

Then in Repipe Pty Ltd v Commissioner of Patents (No 2) [2019] FCA 2125, Repipe convinced McKerracher J that there was still hope for it. The Commissioner sought orders that the appeal be dismissed, but Repipe sought orders allowing it to file an application to amend pursuant to section 105(1A) of the Patents Act 1990 (Cth). While McKerracher J expressed doubt as to whether the claims could be resurrected, and noted the importance for finality of litigation, his Honour allowed Repipe time in which to propose amendments as the prejudice to it outweighed any prejudice to the Commissioner.

In the present case, perhaps unsurprisingly, McKerracher dismissed Repipe’s application to amend the patents, and refused leave to file a further amendment application. The Commissioner argued that Repipe’s first amendment application was essentially an attempt to reopen and rehear the original case, contrary to the principles of finality of litigation. The Commissioner argued that the first amendment application did not seek to address McKerracher J’s first decision, but instead simply added detail into the claims which were either drawn from the specification as filed which had been found not to disclose a patentable invention, or added detail not found in the specification as filed, in which case the amendments would not be allowable under section 102 of the Patents Act.

In response, Repipe sought to address the Commissioner’s complaint that the attempt to introduce “pseudo code” into the specification did not comply with section 102, by proposing a second amendment application. The Commissioner opposed leave on the basis that the amendments were futile because they would not overcome the original decision, that they did not comply with section 102 and that there should be finality of litigation. As to futility, McKerracher J observed that the Commissioner had contended that the more recent Full Court decision in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (“Rokt”) supported McKerracher J’s first decision, in that it affirmed and applied the same approach to assessing computer-implemented business methods and schemes that was adopted by the Full Court in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161; (2019) 372 ALR 646, Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; (2014) 227 FCR 378 and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177; (2015) 238 FCR 27. This involves asking whether the computer is a mere tool in which the invention is performed (unpatentable), or whether the invention lies in the computerisation (potentially patentable): Rokt at [108].

Justice McKerracher expressed doubt as to whether Rokt impacted on his earlier decision but observed that, if that was the case, that was a matter for appeal, not re-hearing by a side-wind in an amendment application. His Honour specifically observed (at [70]):

The conclusion in Rokt by the Full Court was that the claim amounted to nothing more than instruction to carry out the business scheme, which in that case, was a marketing scheme. The claims in this instance are nothing more than an instruction to carry out a work place health and safety document scheme using generic computer technology.

His Honour also distinguished the decision of Burley J in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778, observing (at [71]) that the invention in that case did not “involve the use of generic computer technology such as a smartphone and a server. Rather, the findings were that the claim was directed to a device, namely, an electronic gaming machine, which his Honour held by reference to regulatory and other considerations specific to the context of gaming machines, was a device of a specific character.”