Some time ago – indeed, BC (i.e. before COVID) – I reported on a decision of Justice McKerracher in the case of Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956 (RePipe No 1). RePipe is a plumbing business based in Western Australia that has developed a risk management software system called rerisk®, which is available as a service to other businesses that want to improve their workplace health and safety (WHS) processes. The system comprises a server-based backend, and an app that can be installed on portable devices (i.e. smartphones or tablets) carried by workers on site. In use, information and documentation pertinent to WHS compliance processes for particular jobs carried out by workers at specific locations are downloaded to the portable devices. The system provides prompts and checklists to ensure that workers comply with relevant procedures, generates alerts when problems or risks are identified, and enables information provided by the workers to be uploaded back to the server and/or communicated to other workers on site.
RePipe has filed patent applications in a number of jurisdictions. In Australia, two innovation patents covering the rerisk® system were examined and found liable to be revoked by the Patent Office, on the basis that their claims were not directed to patent-eligible subject matter, i.e. a ‘manner of manufacture’ under the Australian law. RePipe appealed to the Federal Court, which upheld the Patent Office decisions in RePipe No 1, issued on 22 November 2019. The court found that the claimed inventions were, in substance, merely unpatentable business methods. The claims were not saved by the fact that the inventions were necessarily implemented in software. As Justice McKerracher explained (RePipe No 1 at [93]-[94]):
No specific application software has been claimed or even identified in any claim of the Patents. No computing programming logic or code is disclosed anywhere in the Patents. The substance of both inventions is a mere scheme that can be implemented using some unidentified software application to cause a server computer and smartphone to perform the steps identified in the claim. To implement the scheme, a reader must use his/her own skill and knowledge to write an appropriate software application. No such application is disclosed in the Patents.
…The language used by patent attorneys when drafting and amending claims cannot convert what is, in substance, an unpatentable business method or scheme into a patentable invention by merely asserting that the invention is in the field of computer technology or by using words in the claim or specification that refer to computer technology …. As a matter of substance, there is no meaningful technical content in the description in the body of the claims or specification.
This was not, however, the end of the story. Following some further ado (discussed below), RePipe has filed an application for leave to appeal to a Full Bench of the Federal Court of Australia, on 2 March 2021.
RePipe Looks to Amend
Following the original judgment, RePipe sought, and was granted, an opportunity to apply to the Patent Office to amend its patents in an attempt to remedy the deficiencies in its claims: Repipe Pty Ltd v Commissioner of Patents (No 2) [2019] FCA 2125 (RePipe No 2). This opportunity was supposed to be limited to a single application, in view of the court’s (and the Commissioner’s) opinion that the patent specifications did not disclose any patentable subject matter. In granting RePipe’s request, the court was ‘mindful that the prejudice to Repipe in not being permitted the opportunity, within a short time frame, to attempt a suitable amendment would be much greater than it would be to the Commissioner’ (RePipe No 2 at [17]).
It might be said that, in the event, RePipe pushed the boundaries of the ‘limited’ opportunity to amend that was granted by the court. In a first amendment application, RePipe sought to add technical detail to the specifications (in the form of ‘pseudocode’ detailing implementation of the invention in software) as well as to the claims. RePipe argued that these amendments were allowable, and did not impermissibly add new matter to the patent specifications, because they were based only on the existing disclosures and common general knowledge. When the Commissioner rejected the first amendment application, RePipe filed a second application withdrawing the pseudocode additions, and proposing alternative amended claims. The Commissioner rejected this second amendment application also. The saga is set out in Repipe Pty Ltd v Commissioner of Patents (No 3) [2021] FCA 31 (RePipe No 3).
On the face of it, RePipe’s efforts to amend appear futile. Throughout, the Commissioner took the view that the court found, in Repipe No 1, that no patentable subject matter was disclosed or claimed in the specifications of the patents, and thus that there was no allowable amendment that could possibly overcome the finding that the claimed inventions were not patent-eligible ‘manners of manufacture’. This left RePipe between a rock and a hard place (or between Scylla and Charybdis, for the more mythologically-minded). If the amendments were indeed legitimately drawn from the original disclosure, then they could not transform the substance of the invention into a manner of manufacture, given the court’s original findings. Conversely, if the amendments were sufficient to overcome the court’s findings, then they must necessarily add new detail, which is not permissible under section 102 of the Patents Act 1990.
The Commissioner also contended that RePipe should not even have leave to file the second amendment application, because the court’s orders had provided it only ‘with a single and limited opportunity to attempt suitable amendments, within a short timeframe’, that it should not have ‘free licence, following a final determination by the Court, to iteratively propose different sets of patent claim amendments to try and address the Commissioner’s submissions on allowability under s 102’, and that ‘the principles of case management and finality in litigation apply’ (RePipe No 3 at [41]).
The court agreed with the Commissioner on all counts, refusing leave to file the second amendment application, and dismissing the first amendment application.
Conclusion – A Complex Case for Appeal?
It may seem that RePipe’s two amendment applications were a costly exercise in futility. However, there may be some method in its apparent madness. One of the difficulties for RePipe is that between the time when its original patent application was drafted and filed (in March 2016), and the time of the decision in RePipe No 1, the Full Federal Court issued its decision in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161, while the decision of the Full Court in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 and that of Justice Burley in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 were both issued between RePipe’s first and second amendment applications. Collectively, these decisions emphasise the important role of technical detail in determining whether a computer-implemented invention is, or is not, a patent-eligible ‘manner of manufacture’. Whether or not RePipe has developed a patentable invention, it is undoubtedly true that a patent attorney would frame the invention differently with the benefit of knowledge of the decisions in Encompass, Rokt and Aristocrat.
An effort to reframe the invention in light of these more recent decisions is therefore not without merit – indeed, it may be the best hope that RePipe has of securing patent rights in Australia given that it cannot travel back in time and change the specifications that were originally filed. The law may not favour such efforts, but that is no reason not to try.
Adding to RePipe’s pain is that it has at least some claims pending in other jurisdictions – including the US – that have not received subject matter rejections (although they may have other rejections or objections against them). The fact that the law relating to subject matter eligibility in its home jurisdiction of Australia appears to be more restrictive than other jurisdictions must be frustrating!
It will be interesting to see how the appeal process plays out. Importantly, RePipe does not have an automatic right to appeal to the Full Court. Where an initial appeal from a decision of the Commissioner of Patents is decided by a single judge of the Federal Court, leave is required for a further appeal to the Full Court. In most of the recent ‘manner of manufacture’ cases originating in the Patent Office, where leave to appeal has been sought, it has been granted – the one exception being Watson v The Commissioner of Patents [2020] FCAFC 56, in which the Full Court concluded that the appeal would have no prospect of success. There is, I think, enough doubt in the RePipe case to merit a grant of leave to appeal, particularly considering that there are pending claims elsewhere that have not be rejected on subject matter grounds.
Assuming leave is granted, it is not clear to me whether RePipe will be able to bring its proposed amendments into play in the appeal, or whether it may be limited to appealing the original decision on the claims in RePipe No 1. However, the amendments from both the first and second amendment applications are on record in RePipe No 3, and I would not be surprised if RePipe seeks to bring these into its application for leave to appeal. Logically, if RePipe were able to establish that the court erred in finding an absence of patent-eligible subject matter in the specifications, then the court’s finding in RePipe No 3 that no allowable amendments could remedy the deficiencies of the original claims would also be in question.
Things could get complicated for the Full Court.
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