13 October 2013

Commissioner Of Patents Applies to Appeal RPL Central Decision

Symbols of JusticeOn 30 August 2013, Justice Middleton in the Federal Court of Australia upheld the appeal by RPL Central Pty Ltd against the decision of the Commissioner of Patents to revoke an innovation patent relating to an automated information and evidence gathering system.  The Commissioner had determined that the patent was invalid on the ground that it did not relate to a patent-eligible ‘manner of manufacture’.

On 25 September 2013, the Commissioner filed an application with the Federal Court for leave to appeal Justice Middleton’s decision (the case is number VID1023/2013 in the Victorian Registry of the court).

As I have pointed out on previous occasions when reporting on this case, I am not an impartial observer, nor am I at liberty to reveal all that I know about the status of the matter, or to express all of my true thoughts and opinions.  RPL Central Pty Ltd is a client of my employer, Watermark Intellectual Asset Management.  I drafted the patent specification which is under scrutiny in the case.  My colleagues within Watermark’s IP Law firm ran – and continue to run – the Federal Court appeal.

Obviously enough, however, I am less than thrilled that our client may once again be compelled to defend its patent before the court.  It is some consolation, I suppose, that RPL Central finds itself in esteemed company – the last time a Patent Office appealed a decision overturing a rejection of patent claims on similar grounds was in Canada, where the patent applicant was Amazon.com.  In that case, the Commissioner’s appeal was largely unsuccessful, and Amazon’s patent claims were eventually approved.

The situation in Australia is, however, somewhat different from Canada, in that in this country there is no automatic right of appeal from a decision which is itself the result of an appeal from a Patent Office determination.  I explained the requirement for ‘leave’ to appeal a decision of this kind when Research Affiliates applied to appeal the adverse decision of Justice Emmett earlier this year, so I will not repeat myself here.  In that case, Research Affiliates also sought orders that the leave application be heard before the Full Court, either immediately prior to, or simultaneously with, the appeal itself.  The Commissioner consented to this proposal, and in the circumstances of that case the requested orders were granted by the court.

The Commissioner’s leave application has been set down for a ‘directions hearing’ before Chief Justice Allsop, at 9.30am on 17 October 2013.  Keen watchers of the Commonwealth Courts Portal will note that the Research Affiliates appeal (case number NSD328/2013 in the NSW Registry), which is scheduled to be heard by Justices Bennett, Middleton and Nicholas on 18 November 2013, has also been set down for directions before the Chief Justice, at the same time and place.  This much, at least, is a matter of public record.  Beyond that, however, I am unable to comment at this time.

Naturally, I will continue to provide updates as, and when, it becomes possible for me to do so!

Image Copyright (c) 123RF Stock Photos


Hendrik said...

Hello Mark,
Thank you for the Blog.
May I ask your opinion please? In the RPL matter, it looks
as if Justice Middleton has only considered the “manufacture” (manner of
manufacture) question, which relates to the consideration as to whether or not
the subject of the Claim belongs to the useful arts. Would it be correct to say that in the RPL matter, the question relating to the allegation of newness, required to meet
the threshold of inventiveness, to be a new “manner of manufacture” was not in question before the Court? Whereas in Research Affiliates, Justice Emmett rejected the Claim under the legal principles pertaining to the allegation of a new "manner of manufacture".

Mark Summerfield said...

Hi Hendrik

I am not sure that I agree with your proposition that Justice Emmett rejected the RA claims under the 'manner of new manufacture' test, and I do not believe that the so-called 'threshold test' arose in either case.

Notably, Justice Emmett did not cite Philips v Mirabella and, on the contrary, stated at paragraph [18]:

The structure of s 18(1) emphasises that the grounds relating to novelty, inventive step, utility and secret use were each excised from the general body of case law that had previously developed the phrase manner of new manufactures. That is made clear by the reference in s 18(1)(a) to manner of manufacture, rather than to manner of new manufactures (Ccom at 290). Thus, manner of manufacture, novelty, inventiveness and utility are now stated as distinct requirements of a patentable invention. The criterion of manner of manufacture requires a decision as to what, at the present time, properly falls within the scope of the patent system. In so far as manufacture suggests a vendible product, that is to be understood as including every result produced by a method or process where that result is an artificially created state of affairs that is of utility in practical affairs and thus of economic significance (Ccom at 291).

Having said that, however, I am not sure that Justice Emmett's decision on the facts of the RA case is entirely consistent with his account of the law relating to 'manner of manufacture'. That will be a matter for the Full Court to decide.

The 'threshold test' is of very limited applicability, and (if it exists at all) covers only those cases in which it is so clear on the face of the specification that there is no invention that recourse to the prior art, and the requirements of s 7, is unnecessary.

Indeed, there is nowadays some doubt as to its continuing relevance. As the High Court said in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21, at [106]:

The decision in Microcell has not always been properly understood; it does not involve a separate ground of invalidity or a discrete "threshold" test.

That sentence ends with a footnote reference to Philips v Mirabella. It is obiter dicta, and oblique, but clearly disapproving of the earlier High Court decision.

The Commissioner has not run either case on the basis of 'newness'. What is at issue is subject matter.

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