Computer implemented patents still out of favour in Australia
Article written by: Dr John Foulkes | Wednesday 23rd December 2015
In Commissioner of Patents v RPL Central Pty Ltd  FCAFC 177 the Full Federal Court has unanimously ruled against a computer implemented invention in an innovation patent application.
This decision follows the Research Affiliates decision (Research Affiliates LLC v Commissioner of Patents  FCAFC 150 earlier this year and suggests that patent applications will face a rigorous test in Australia if they claim computer implemented methods.
The Full Federal Court allowed an appeal against a Federal Court decision , the Justices stating that:
- ‘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.’
While declining to state precise guidelines the Justices suggested that the substance of the invention is the key question. If an invention is in substance a business method, then combining it with a computer performing well known functions cannot make it patentable.
Claim 1 of the innovation patent application was directed to a method of gathering evidence for a competency assessment. In summary the claim included the steps of:
- Using a computer to retrieve the criteria using the Internet;
- Processing the criteria to generate corresponding questions relating to the competency of the individual;
- Presenting those questions; and
- Receiving answers for the questions including documents uploaded by the user.
The Justices noted that computers were regularly used for searching and information processing. Therefore retrieving the data was considered a normal use (e.g. analogous to use of Google). Similarly turning criteria into questions by prepending or inserting words was a normal use in the field of computing. The Justices agreed that the method utilises the speed and processing power and ability of a computer. Even though there was, in this case, possibly too much information to search without a computer this could not save the application. The necessity of a computer for the method was not enough to make the innovation patentable.
It was noted that reframing the criteria into questions could have been outside the generic use of a computer. However the justices were clear that reframing was an idea. The specification provided no instructions on how to perform this idea (other than by addition of words). Therefore the reframing was considered an idea, and as such could not provide a patentable improvement in Australia.
Looking forward we expect that the standard required for patentability of computer implemented inventions will continue to be rigorously examined. Patents for computer implemented inventions will be available, but these will need to show an innovation in the operation of a computer, or the particular machine. On a positive note, there appears to be some flexibility on the boundary between ideas and patentable methods. Aristocrat Technologies was successful (Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited  FCA 735) with an application for prize awards in gambling machines. The Justice found that these were not mere ideas, but new and useful gaming machines.
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.