Long-term readers of this blog will be aware that one issue on which we have been consistently critical of IP Australia is its recent handling of patent applications relating to subject matter it regards as computer-implemented business methods. The practice of the Patent Office in relation to this controversial subject matter changed at around the time of the US Supreme Court decision in Bilski v Kappos (issued in the same month this blog began), most prominently with the Office’s published decision rejecting an application in the name of Invention Pathways (see Method for Commercialising Patentable Inventions Found Neither Patentable nor an Invention).
We were not critical of the Invention Pathways decision at the time, and to this day we would maintain that the examiner, and the Hearing Officer, were both right to reject the application in that case. However, with the benefit of hindsight – looking at how this decision has been used to reject less-clearly unworthy claims over the past two-and-a-half years – we would perhaps be more critical of the reasoning in the decision. While the incidental use of a computer for record-keeping purposes (as in the method claimed in Invention Pathways) may not be sufficient to make an otherwise ineligible method patentable, the Hearing Officer went beyond this, proposing that the ‘concrete effect or phenomenon or manifestation or transformation’ required by the Full Federal Court in Grant v Commissioner of Patents ( FCAFC 120) ‘must be one that is significant both in that it is concrete but also that it is central to the purpose or operation of the claimed process or otherwise arises from the combination of steps of the method in a substantial way’ ( APO 10 at , emphasis added).
A SERIES OF ADVERSE DECISIONSThere is a whole continuum of possible applications of technology to the implementation of new processes – whether for doing business, or otherwise – between the extremes of the technology being ‘insignificant’ or incidental, and its being ‘central to the purpose’ of the method. However, in a series of decisions subsequent to Invention Pathways, variations of the ‘central to the purpose’ or ‘substantial contribution’ tests have been applied to reject a range of subject matter (see Iowa Lottery  APO 25, Research Affiliates LLC  APO 31, First Principles, Inc.  APO 1, The Procter & Gamble Company  APO 14, Myall Australia Pty Ltd v RPL Central Pty Ltd  APO 48, Discovery Holdings Limited  APO 56, Network Solutions, LLC  APO 65, Jumbo Interactive Ltd  APO 82, Research Affiliates, LLC  APO 101, Sheng-Ping Fang  APO 102, Celgene Corporation  APO 12, Celgene Corporation  APO 71).
FEDERAL COURT APPEALSOf the above-listed decisions, five were appealed to the Federal Court of Australia, by three parties: Research Affiliates, LLC appealed the two adverse decisions against its applications; RPL Central Pty Ltd appealed the adverse decision against its innovation patent; and Celgene Corporation appealed the two decisions refusing certification of its innovation patents. (Patentology’s reports of the original Patent Office decisions in these cases are: Why IP Australia is Clearly Wrong About Research Affiliates; Computer-Implemented Invention Found Unpatentable; Evergreening by Business Method? Patent Office Says ‘No’!; and Celgene Tries – and Fails – Again With Drug Safety Business Method).
RECENT DEVELOPMENTSCelgene withdrew its appeals on 23 October 2012, however it has filed a further divisional innovation patent, no. 2012101491, which is currently under examination (although for some reason a copy of the first examination report, supposedly issued on 22 October 2012, is not currently available for download).
The two Research Affiliates appeals were heard together in Sydney on 21 November 2012.
The RPL Central appeal was heard in Melbourne on 7 December 2012.
We can say very little about proceedings in the two appeal hearings. In the case of the Research Affiliates case we were not present in court. And while we were present at the RPL Central appeal hearing, we were there in our capacity as representative of the patentee, and it would therefore not be appropriate for us to comment on the case at this time.
WHAT THE APPEALS ARE NOT ABOUTIt should be understood, however, that neither of these cases is about whether or not it is possible to obtain patents in Australia for inventions implemented through the use of computer software. That software-implemented inventions can be patented has been clear since at least the decision of the Federal Court in IBM v Commissioner of Patents  FCA 625, in which the patent was for an improved method of producing a curve on a computer display. This decision was confirmed in CCOM Pty Ltd v Jiejing Pty Ltd  FCA 1168 (method for inputting Chinese characters to a computer) and Welcome Real-Time SA v Catuity Inc  FCA 445 (method and system for operating a customer loyalty scheme using computerised terminals and smart cards).
Nor are the Research Affiliates and RPL Central cases about whether ‘pure’ business methods, involving only the manipulation of financial or legal arrangements between parties (however sophisticated), are patentable in Australia. The Full Bench of the Federal Court in the Grant case (noted above) made it clear that such things are not patent-eligible when, as in Mr Grant’s patent claims, ‘the alleged invention is a mere scheme, an abstract idea, mere intellectual information’, having no physical consequence at all, ‘which has never been held to be patentable’ (Grant, at ).
CONCLUSION – NOW WE WAITThe task before the judges of the Federal Court might be characterised as being to determine whether the inventions of Research Affiliates and RPL Central are more akin to those in IBM, CCOM and Welcome Real-Time – and thus patentable – or whether they fall within the unpatentable field occupied by Grant.
We have been fairly clear in the past where we stand on this question, and now the moment of truth is approaching. Within a few short months we will either be crowing, or eating crow – or perhaps a bit of each, if the two cases go different ways!