The Full Court of the Federal Court of Australia recently decided that a claim for gathering evidence relevant to an assessment of an individual’s competency did not constitute patentable subject matter (Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177).


In this decision the Court confirmed last year’s landmark decision Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, where the same Court set a new test for software patents. According to this test the substance of the invention needs to be considered in order to determine whether the claims constitute patentable subject matter. In other words, it is not enough to simply include a computer into the claim and argue that storing information on a data store is a physical effect. Instead, the substance of the invention has to be more than the idea.

In the current RPL Central case, the claims are directed to the following steps (in shortened form):

  1. retrieving assessable criteria
  2. processing the assessable criteria to generate questions
  3. presenting the questions, and
  4. receiving responses including selected files.

The judges found that “[t]he reframing of the criteria into questions may be outside the generic use of a computer but the idea of presenting questions, by reframing the criteria, is that: an idea. It is not suggested that the implementation of this idea formed part of the invention.” [110]

The judges further stated that “[i]t is not suggested that the creation of the plurality of assessable criteria themselves form the basis of the claimed invention. They are present on the NTIS website from which they are retrieved. It is not suggested that the presentation of the questions or the processing of the user’s responses involve ingenuity themselves or that this constitutes the requisite manner of manufacture.” [112]

Consequently, the judges concluded that “the claimed invention is to a scheme or a business method that is not properly the subject of letters patent.” [113]


We expect that the implications of this judgment will be similar to Research Affiliates as we have reported here. That is, in our view this judgment basically applies a variant of the US test, where the claim needs significantly more than the abstract idea in order to be patentable. This, of course, is good news for practitioners who are familiar with the current US test based on the Alice Corp decision.

This also means that clever data processing, that is, inventions where the inventiveness resides in the way the data is being processed, is still patentable if claimed and drafted adequately.