10 May 2015

‘Software Patents’ Back Under the Appeals Court Microscope

Artificial IntelligenceOn Thursday, 7 May 2015, a full bench of the Federal Court of Australia, comprising Justices Bennett, Kenny and Nicholas, heard the appeal of the earlier single-judge decision in RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871.  The case relates to Australian innovation patent no. 2009100601, which covers a computer-implemented invention (i.e. a so-called ‘software patent’) in which a computer system is used to centralise and automate mechanisms for prospective students to provide evidence of their prior education and experience for the purpose of potentially receiving course credit under a ‘recognition of prior learning’ (RPL) procedure.

Specifically, the case addresses the question of whether the computer-implemented evidence-gathering method and system is eligible for patent protection under the ‘manner of manufacture’ test for subject matter in Australia.

As always when I write about this case, I need to point out that I am not an impartial observer, and that I have to be reasonably circumspect in what I say about the matter.  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 have been running the Federal Court appeals on behalf of RPL Central.

However, my involvement does mean that I was in court for the hearing, and I am therefore in a position to provide a brief report on the proceedings.  For the most part, the parties were in furious agreement on the relevant legal principles, with the differences lying primarily in the way each side contended that these should be applied to the RPL Central invention.


The  RPL Central patent was filed, examined and certified back in 2009.  It was opposed in 2011 by Myall Australia Pty Ltd, on the sole ground of lack of novelty.  The Patent Office Hearing Officer raised an additional ground that the claimed invention was not patent-eligible subject matter under the Australian test of ‘manner of manufacture’.  The opponent was wholly unsuccessful on the novelty ground, however the Hearing Officer found the claims invalid on the ground that they did not define a patentable manner of manufacture.  RPL Central appealed the decision to the Federal Court of Australia, where Justice Middleton overturned the Patent Office decision.  The Commissioner of Patents then sought leave to appeal the judgment to a full bench of the court.

For further background on the original decision see At Last – ‘Software Patent’ Appeal Upheld in Australian Court, while for additional information on the circumstances of the appeal lodged by the Commissioner of Patents see Commissioner Of Patents Applies to Appeal RPL Central Decision.

Arguments Presented in the Appeal

Mr David Catterns QC appeared for the Commissioner of Patents, assisted by Mr Ben Fitzpatrick, while Mr Adrian Ryan SC appeared for RPL Central, assisted by Mr Ian Horak.

For the Commissioner, Mr Catterns argued that the question of whether or not a claimed invention is a manner of manufacture must be approached as a matter of substance, and not merely one of form.  He contended that the evidence collection process underlying the RPL Central invention is nothing more than an abstract idea or a scheme, and that doing nothing beyond implementing an unpatentable scheme using a computer is not, of itself, sufficient to render the scheme patentable.

Mr Ryan, on the other hand, argued that the invention claimed in the RPL Central patent is a patent-eligible manner of manufacture because it is a concrete application of the idea of using available qualification requirements and criteria to implement an online process whereby users can respond to questions and upload evidence in support of a claim for RPL.

In essence, the parties differed over how the RPL Central invention should be characterised, and therefore how to apply the recent decision of the same three judges in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150

The Commissioner’s position is that the computer contributes nothing more than carrying out an unpatentable scheme ‘more efficiently’, and that it is therefore analogous to the unpatentable invention in Research Affiliates, where the court found (at [118]) it to be ‘no part of the claimed method that there is an improvement in what might broadly be called “computer technology”.’

RPL Central’s position is that, in this case, the computer is – as Justice Middleton found – integral to the invention.  Furthermore, in accordance with a distinction drawn by the court in Research Affiliates (at [112]), the invention provides ‘an improvement in the … effect of the use of the computer’ and in this sense provides the requisite improvement in ‘computer technology’.

(I note that an alternative way to express this argument is that, while the invention in Research Affiliates arose ‘in the creation of the index as information and as a scheme’ with a computer being merely a convenient way for an analyst to manipulate the information, the invention in RPL Central resides in the recognition that a real-world problem in the education industry can be addressed by the appropriate application of computer technology.  It is in this sense that the computer is ‘integral’ to the invention, as a matter of substance, and is not merely recited in the claims as a matter of form.)

Should We Look for a ‘Technical Contribution’?

As in the Research Affiliates hearing, which I also attended (see Australian Appeals Court Hears ‘Business Method’ Patent Case), the judges were relatively interactive, and challenged counsel on both sides with a number of probing questions.

An interesting issue that emerged from questioning by the judges (particularly Justice Bennett) was the usefulness of the European ‘technical contribution’ test for the assessment of patent-eligibility in Australia.  While I am not sure that such a test could be directly applied in this country, there is certainly something to be said for the notion that an invention that satisfies the European requirements should generally also qualify as a ‘manner of manufacture’ in Australia.  However, in the absence of express exclusions from patentability in the Australian law, such as those which exist in Europe, it seems equally certain that the scope of patent-eligible subject matter in Australia should be somewhat broader.

In particular, in Europe a computer program cannot, in itself, make a relevant ‘technical contribution’ because computer programs (as such) are excluded from patentability.  Thus a computer program must produce a technical effect over and above the ‘normal’ processes inherent in the execution of any program on a machine.

In Australia, however, there is no ‘computer program’ exclusion, and thus the provision of a program which causes some combination of ‘known’ computer hardware and software components to produce a new and useful effect should constitute a technical contribution of the inventor/programmer, even if the effect is not itself strictly ‘technical’ in nature.

It will be interesting to see whether the concept of a ‘technical contribution’ figures in the court’s judgment.

Conclusion – A Swift Hearing is a Good Hearing?

I was surprised at how quickly the hearing was conducted.  I had set aside the day (as had the court), but it was all over by lunchtime.  Perhaps this is not surprising, given that all three judges were well on-top of the issues, having already considered the relevant legal authorities recently in Research Affiliates.  Neither party adopted what would have been a ‘brave and courageous’ position of arguing that there was anything wrong with the reasoning in Research Affiliates!

We might also therefore hope for a relatively swift judgment – certainly somewhat quicker than Research Affiliates which took almost exactly 12 months to issue.

I should note that it is not a foregone conclusion that the court will issue a judgment on the merits of the appeal.  The Commissioner requires leave to appeal, and the hearing was conducted on the basis that the arguments for leave were essentially consonant with the substantive arguments.  If the court does not identify any error in Justice Middleton’s judgment at first instance, it could simply refuse leave to appeal.

So now we wait to see not only what the court decides to do, but whether it will provide any further clarification of the law in Australia on the patentability of computer-implemented inventions.

Image credit: ‘Cryteria’ (Own work) [CC-BY-3.0], via Wikimedia Commons


Post a Comment

Copyright © 2014
Creative Commons License
The Patentology Blog by Dr Mark A Summerfield is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 3.0 Australia License.