05 May 2016

Australian High Court Rejects ‘Software Patent’ Appeal

FinToday, 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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