The Full Federal Court of Australia has recently issued a judgment providing additional guidance on whether computer implemented business methods are patentable. The Patents Act 1990 states that for an invention to be patentable, it must be a ‘manner of manufacture’.
In August 2013, Middleton J of the Federal Court of Australia found that the claimed invention (RPL Invention) the subject of RPL Central Pty Ltd’s Australian Innovation Patent No. 2009100601 (RPL Patent) was a ‘manner of manufacture’ and thus patentable. The RPL Invention was a computer implemented method or system for recognising and assessing an individual’s prior learning credentials. The Commissioner of Patents appealed the decision to the Full Federal Court on the basis that the use of a computer in the RPL Invention contributed nothing to make an un-patentable system or method patentable.
In opposition to the Commissioner of Patents’ arguments RPL argued that the RPL Invention would not exist without the use of a computer, therefore the invention was a manner of manufacture – and thus patent eligible – as it could be characterised as an improvement to computer technology.
The claims of the RPL Patent related to “A method of gathering evidence relevant to an assessment of an individual’s competency”.. This method specifically claimed the use of a computer for retrieving criteria, processing criteria, producing questions based on the criteria and receiving answers to the produced questions.
The Full Court, on Friday 11 December 2015 overturned Middleton J’s decision, finding that the claims of the RPL Patent did not relate to a manner of manufacture, and were therefore not patentable. In the Research Affiliates case last year the Full Court set out various matters that it stated were relevant to assessing whether computer implemented methods involved a ‘manner of manufacture’,, In the RPL case the Full Court set out some further principles relevant to that consideration:
- The basis for analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable.
- Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well-known and understood functions
- There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed
The Full Federal Court went on to say the fact that a claimed method cannot practically be carried out without the use of a computer is not sufficient of itself to render the claimed method patentable if it simply involves “simply the speed of processing and the creation of information for which computers are routinely used. In those circumstances, the claimed invention is still to the business method itself.”
However, the Full Court did acknowledge that in those circumstances, the “answer is not straightforward because this is not a case where the computer simply processes the information entered by the user, for example by using an algorithm, or retrieves information from the Internet in response to a user’s question”.
With respect to RPL’s method, the Full Federal Court found that: ”The method does utilise the speed and processing power and ability of a computer but there is no suggestion that this is other than a standard operation of generic computers with generic software to implement a business method… The reframing of the criteria into questions may be outside the generic use of a computer but the idea of presenting questions, by reframing the criteria, is that: an idea. It is not suggested that the implementation of this idea formed part of the invention. Indeed, no instruction as to such programming is provided in the specification other than the idea of turning the performance criteria provided by [a third party] into a question by prepending or otherwise inserting a form of words”. Perhaps if the claims had encompassed the means by which this idea was to be implemented, they may have had a greater chance of being found to be a manner of manufacture.
As there was no such instruction, the Court said that, “[r]ecognising that the claims are to a method and system comprising a combination of integers, it is necessary to understand where the inventiveness or ingenuity is said to lie. …[It] is apparent that, other than the integers providing that the computer processes the criteria to generate corresponding questions and presents those questions to the user, the method does not include any steps that are outside the normal use of a computer. It is not suggested that the creation of the plurality of assessable criteria themselves form the basis of the claimed invention … It is not suggested that the presentation of the questions or the processing of the user’s responses involve ingenuity themselves or that this constitutes the requisite manner of manufacture.”
The Full Federal Court found that the RPL Invention did not include any steps that are outside the normal use of a computer and that the other features of the claimed invention related to a scheme or business method, leading to the conclusion that the RPL Invention was outside the scope of what is patentable.
Comments on the Myriad decision
Readers may be aware of the High Court decision in D’Arcy v Myriad Genetics Inc. regarding the patentability of an isolated gene sequence. In that case the High Court made various comments regarding the need to consider additional factors in assessing manner of manufacture in certain circumstances. However, the Full Court found that the High Court’s comments were limited to where the invention involved “a new class of claim involv[ing] a significant new application or extension of the concept of “manner of manufacture”. The Full Court accordingly declined to consider those additional factors in coming to its decision.
What does this mean for the patentability of business methods and computer software in Australia?
Business methods are not completely excluded from patentability by this decision. In that regard, the Full Court stated that “The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than this”. How much ‘more’ remains open.
This case gives some additional guidance on how the Courts will assess whether a computer implemented business method is a manner of manufacture. However, the Full Court noted 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.” In other words, each case will be assessed on its merits.
Subject to any High Court decision, for computer software to be considered patentable there must be something new, or some form of ingenuity in the way the computer is being used.
It remains to be seen whether the patentee will appeal this decision to the High Court, an option that remains available as at the time of writing.
If you wish to read the decision, it can be found at: Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (11 December 2015)
If you would like further information on any of the material discussed in this article, please contact Tim Francis, Principal or Ryan Boe, Associate.