On 5 May 2016, the High Court dismissed an application for special leave to appeal the RPL Central decision1 of the Full Federal Court stating that the Full Court’s decision was plainly correct.2

The RPL Central decision

As discussed in our related post, in the RPL Central decision the Full Court ruled on when a business method implemented in a computer can be patentable subject matter. The Full Court rejected RPL Central’s invention because the invention or ingenuity of the invention lay in the idea or business method, rather than the programming or operation of the computer or implementation of the method by the computer.

Specifically, the Full Court found the claimed steps of retrieving criteria from a server, presenting questions to a user and receiving responses to the questions to be commonplace computer functions that merely reflect the normal use of a computer. The Full Court acknowledged that the claimed step of processing criteria to generate questions may have pointed to an inventive implementation of an idea of reframing the criteria as questions. However, the Full Court found that the claims were directed toward the idea and not toward the actual implementation of the idea by the computer.

What we expect from IP Australia

Now that the RPL Central decision has been endorsed by the High Court, we expect IP Australia to refer to this decision more often during examination of computer implemented inventions. In particular, we expect IP Australia to raise patentable subject matter objections to claimed inventions where the substance of the invention is in the idea or business method, rather than in a new and useful effect in a computer.

The state of patentable subject matter for computer related inventions

While the RPL Central decision and the recent Research Affiliates decision3 refer to corresponding United States and European patent law, these decisions still appear find their basis in the NRDC case4 and subsequent Australian judicial authorities5. In particular, with reference to the NRDC case, the broad requirement for patentable subject matter still appears to be that a method produces a new and useful effect in a physical phenomenon (e.g. a computer) that has utility in practical affairs. Such an effect includes any new, useful and verifiable production, improvement, restoration or preservation of a physical phenomenon.

In this context, the RPL Central decision and the Research Affiliates decision appear to clarify that an invention that is merely directed to an improvement in an idea or a business method does not meet the above patentable subject matter requirement. Instead, for a business method that is implemented in a computer to be patentable subject matter, a separate result or useful effect beyond the typical working of the computer must be achieved by the working of the method and that result must have its own economic utility.

Therefore, while automation of an existing business process will be difficult to patent, a broad range of software related inventions are still patentable. We will follow up this article with a second article providing practical examples of such inventions.

  1. Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177
  2. RPL Central Pty Ltd v Commissioner of Patents [2016] HCASL 84
  3. Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150
  4. National Research Development Corporation v Commissioner of Patents [1959] HCA 67
  5. See, for example, Grant v Commissioner of Patents [2006] FCAFC 120; CCOM Pty Limited v Jiejing Pty Limited [1994] FCA 1168; International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR 218