Australian High Court Rejects ‘Software Patent’ Appeal

Today, Thursday 5 May 2016, the High Court of Australia dismissed the application by RPL Central Pty Ltd for special leave to appeal last December’s decision of the Full Court of the Federal Court of Australia that its patent claims covering a computer-implemented method of evidence gathering for recognition of prior learning (RPL) were not directed to patent-eligible subject matter (i.e. a ‘manner of manufacture’) under Australian law.

The Court’s decision was made solely on the basis of the parties’ written submissions.  No hearing was conducted.  I understand that this is a relatively recent practice of the High Court, in order to expedite the disposition of many special leave applications, for which a hearing is not deemed necessary.  No reasoning for the decision has been provided as yet, although I understand that brief reasons will be published, and made available via AustLII’s High Court of Australia Special Leave Dispositions Decisions database under the neutral citation [2016] HCASL 84.

The RPL Central case has been a long journey, with more than its share of ups and downs.  The innovation patent (no. 2009100601) was filed in June 2009.  Between August and October of that year it was examined and certified.  No objections were raised regarding the subject matter of the patent.  In March 2011 an opposition was filed, raising only the ground of lack of novelty.  The Commissioner’s Delegate hearing the opposition raised the issue of lack of ‘manner of manufacture’ (i.e. subject matter eligibility), and requested submissions on this ground.  The opponent’s objection of lack of novelty was readily dismissed, but the Delegate found the patent invalid on subject matter grounds. 

This decision was appealed to the Federal Court where, at first instance, Justice Middleton upheld the appeal, and overturned the Patent Office ruling.  The Commissioner of Patents appealed to the Full Court, which reversed the primary judge’s decision in its December 2015 judgment.

With the High Court’s rejection of RPL Central’s application to appeal that decision, all avenues are exhausted.

So this is the way it ends – not with a bang, but a whimper.

Update: Friday 6 May 2016

The brief reasons of the High Court have now been published:

The Full Court was plainly correct and, accordingly, none of the applicant's proposed grounds of appeal enjoys sufficient prospects of success to warrant the grant of special leave to appeal.

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Before You Go…

Thank you for reading this article to the end – I hope you enjoyed it, and found it useful.  Almost every article I post here takes a few hours of my time to research and write, and I have never felt the need to ask for anything in return.

But now – for the first, and perhaps only, time – I am asking for a favour.  If you are a patent attorney, examiner, or other professional who is experienced in reading and interpreting patent claims, I could really use your help with my PhD research.  My project involves applying artificial intelligence to analyse patent claim scope systematically, with the goal of better understanding how different legal and regulatory choices influence the boundaries of patent protection.  But I need data to train my models, and that is where you can potentially assist me.  If every qualified person who reads this request could spare just a couple of hours over the next few weeks, I could gather all the data I need.

The task itself is straightforward and web-based – I am asking participants to compare pairs of patent claims and evaluate their relative scope, using an online application that I have designed and implemented over the past few months.  No special knowledge is required beyond the ability to read and understand patent claims in technical fields with which you are familiar.  You might even find it to be fun!

There is more information on the project website, at claimscopeproject.net.  In particular, you can read:

1. a detailed description of the study, its goals and benefits; and
2. instructions for the use of the online claim comparison application.

Thank you for considering this request!

Mark Summerfield

Tags: Appeal, Australia, Business processes, Computer programs, Patentable subject matter