Australia - In The Pipeline Or Still A Pipe Dream? Court Tests The Patentability Of Computer Implemented Inventions.
Legal News & Analysis - Asia Pacific - Australia - Intellectual Property
6 January, 2020
Repipe Pty Ltd v Commissioner of Patents  FCA 1956.
What you need to know
- The Federal Court of Australia has once again considered the patentability of computer-implemented inventions.
- Drawing from the Full Court's conclusions in the Encompass decision, Justice McKerracher concluded that the substance of the inventions claimed in Repipe's patents were not patentable subject matter.
- The decision does suggest that computer-implemented inventions may still be patentable in Australia on a case-by-case basis, particularly where they result in an improvement in computer technology.
Repipe Pty Ltd (Repipe) was the registered proprietor of two Australian Innovation Patents (the Patents) entitled "methods and systems for providing and receiving information for risk management in the field".
The Patents are directed to methods of providing information for risk management to a user of a portable computing device (for example, a phone) and are said to prompt the users to consider certain steps in order to comply with workplace health and safety (WHS) requirements.
Patent Office Decision
On 28 June 2018, a delegate for the Commissioner of Patents revoked the Patents on the basis that the inventions claimed were not a "manner of manufacture" within the meaning of section 18 of the Patents Act 1990 (Cth) ( APO 42 at ).
Repipe appealed the Patent Office decision, asserting that the inventions claimed in the Patents were patentable subject matter. Both Repipe and the Commissioner of Patents requested a hearing following delivery of the Full Court's judgment in Encompass Corporation Pty Ltd v Infotrack Pty Ltd  FCACA 161.
In September 2019, an enlarged five-judge bench of the Full Federal Court concluded that a method for displaying information regarding entities was "no more than an instruction to apply an abstract idea (the steps of the method) using generic computer technology" (at ) and consequently not patentable subject matter (see our article here).
The Full Court considered prior authorities on the "manner of manufacture" test and emphasised that if the claims, as a matter of substance, "merely require generic computer implementation" of an otherwise abstract idea, then the claimed invention cannot be a manner of manufacture.
Federal Court decision in Repipe
Justice McKerracher re-affirmed the principles from the earlier authorities noting that a mere scheme or plan is not patentable. However, his Honour stated that an improvement in computer technology, including one that implements a method used in the conduct of business, is patentable (see our article on the Rokt decision here).
Based on submissions by the delegate of the Commissioner of Patents, Justice McKerracher provided a helpful summary of the propositions emerging from earlier authorities on the patentability of computer-implemented inventions at :
- The Court must decide, as a matter of substance not form, whether the claimed invention is proper subject-matter for a patent (Commissioner of Patents v RPL Central Pty Limited (2015) 238 FCR 27 at  and Research Affiliates LLC v Commissioner of Patents (2014) 227 FCR 378 at ). This requires consideration of both the claims and the body of the specification.
- The assessment is not done mechanically pursuant to precise guidelines (Research Affiliates at ). It is necessary to understand where the inventiveness or ingenuity is said to lie (RPL at ).
- A distinction exists between a technological innovation and a business innovation. The former is patentable, the latter is not. A business method or scheme is not, per se, a proper subject-matter for a patent (RPL at ; Research Affiliates at ).
- Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention to simply put a business method into a computer to implement the business method using the computer for its well-known and understood functions (RPL at ).
- An invention must be examined to ascertain whether it is, in substance, a scheme or whether it can be broadly described as an improvement in computer technology (RPL at ). Consideration may be given to whether the invention solves a technical problem (Research Affiliates at ).
- Where a business method or scheme cannot be implemented without using a computer that does not, of itself, provide patentability. Where a business method or scheme is implemented by using a computer to perform its ordinary functions, the claimed invention is still to the business method itself, and there, unpatentable.
- It is insufficient when assessing a computer-implemented invention merely to ask whether the claimed invention satisfies the two limbs of the manner of manufacture test identified in National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252: a) an artificially created state of affairs; and b) utility in the field of economic endeavour.
Justice McKerracher held that the problem that the Patents solved was a business problem in the field of WHS, which did not exist in the field of computing. As a matter of substance, there was no meaningful technical content in the Patents' claims or specifications.
His Honour considered that the claimed method used computers to implement a solution to a business problem, whose architecture was nothing more than a standard (generic) server, network and a smartphone. Justice McKerracher concluded at  of his reasons for judgment that:
"The Patents may well contain a good idea, but they are not a manner of manufacture and are not patentable subject matters."
Search for improvement in computer technology?
This decision does not change the current test for patentability of computer-implemented inventions in Australia.
However, the hearing of the appeal by the Full Court in Rokt is anticipated which may offer further clarity on this issue. It remains to be seen whether the Full Court will provide a revised approach to computer-implemented technologies.
For further information, please contact:
Nina Fitzgerald, Partner, Ashurst