Toward a new inventiveness requirement: The RPL Central decision
As discussed in our related post, the Full Court of the Federal Court has held that computer-implemented business methods are patentable in Australia, but only if the invention resides within the actual implementation of the business method by the computer.1
The RPL Central innovation patent under consideration by the Court was directed towards gathering evidence relevant to an assessment of an individual’s competency relative to a recognized qualification standard. Referring with approval to the approach taken in the Research Affiliates decision2 (as previously discussed here), the Court sought to identify the substance of the invention to determine where the inventiveness or ingenuity of the inventors resides,3 and accordingly, whether the claimed invention involved a manner of manufacture.
Determining the substance of the invention
In doing so, the Court found the claimed steps of retrieving the criteria from the server, presenting the questions to a user and receiving responses to the questions to be commonplace computer functions that merely reflect the normal use of a computer. Furthermore, and although the Court acknowledged that the claimed step of processing the criteria to generate the questions may have pointed to an inventive implementation of the idea of reframing the criteria as questions, it ultimately found that the claims were directed toward the idea and not toward the actual implementation of the idea by the computer.
Why was the claimed step of processing the criteria to generate the questions not considered an inventive implementation?
The specification of the patent does describe that processing the criteria to generate the questions may include prepending text to the criteria to convert a statement into a question, forming questions based on the identification of key words or concepts in the criteria or employing additional contextual information to formulate questions. However, the Court found this information lacking, noting that the specification does not include any programming instructions as to how the criteria are to be processed to generate the questions. The Court also noted that the specification does not suggest that the actual implementation of the reframing of the criteria as questions forms part of the invention. What is not addressed in the decision is how such programming instructions, if included in the specification, might have been assessed for the requisite ingenuity.
Is the Court suggesting that the operation of a computer as an advisor or artificial intelligence is indicative of a manner of manufacture?
Despite the claimed processing step, the Court found the computer to be, in effect, operating as a mere intermediary in the exchange between the user and the institution, as opposed to adding something more to the substance of the business method. This analysis echoes the approach taken by the US Supreme Court in the Alice Corporation decision.4 However, by contrasting the operation of a computer as a mere intermediary with the operation of a computer as an advisor or artificial intelligence, the Court appears to be suggesting that the latter might signify the requisite something more.5 How and whether this remark will influence later decisions remains to be seen.
The decision
The Court concluded that the substance of the invention was considered to be no more than an abstract idea and the claimed method was found to be directed towards unpatentable subject matter.
Impact of the decision
This decision has reaffirmed the finding of the Full Court of the Federal Court in the Research Affiliates case that it is necessary to decide whether the claimed invention, as “a matter of substance, not form”, is properly the subject of a patent. However, it also appears to go further, seeming to suggest that to transform an idea into an actual implementation of the idea by a computer, and accordingly potentially patentable subject matter, programming instructions as to how the computer performs the implementation need to be described in the specification. A positive acknowledgement that the actual implementation forms part of the inventive concept may also prove persuasive.
Noteworthy is the fact that the claimed invention in the RPL Central case was considered to involve an innovative step and the claimed invention in the Research Affiliates was considered to involve an inventive step. However, neither claimed invention was considered to involve the requisite level of inventiveness to be considered a manner of manufacture. This appears to be based on a notion that the innovative step or inventive step may reside in a business method but inventiveness in the context of manner of manufacture must reside in the actual implementation of the business method by the computer.
Guidance from IP Australia
IP Australia has recently updated the section of Guidelines for Patent Examiners that relates to Computer Implemented Inventions (found here) in view of this decision. Unfortunately, it offers very little guidance beyond that set out in the RPL Central decision on what exactly is required for an invention to meet the patentable subject requirement.
Guidance from overseas jurisdictions
It is worth noting that in applying the “substance of the invention” test, the Australian courts appear to have been heavily influenced by the “technical contribution” approach applied by the UK courts, i.e., considering whether the invention makes a technical contribution to the known art, with the rider that purely excluded subject matter does not count as a technical contribution.6 Some guidance on what might constitute the requisite ingenuity for satisfying the patentable subject requirement might therefore be found in UK case law. A point of contention with this approach, however, and as has been raised by the Boards of Appeal of the European Patent Office, is that it necessitates a comparison of the invention with the prior art to identify the actual contribution. This is problematic because, unlike the novelty and inventive step provisions of the Australian Patent Act, there is no rule defining the prior art which should be applied in assessing patentable subject matter.
What next?
This might not yet be the end of the story for RPL Central’s patent and the patentability of computer implemented business methods in Australia. An application to the High Court to appeal the decision has been submitted and is under consideration. With any luck, the High Court will avail of the opportunity to clarify what is actually required for a computer implemented business method to meet the manner of manufacture requirement.
[1]Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177<
[2]Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150
[3] Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 at [110] to [112]
[4]Alice Corporation Pty Ltd v CLS Bank International 134 S Ct 2347 (2014)
[5]Ibid at [99] and [109]
[6]HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 (3 May 2013); Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066; [2009] RPC 1; Aerotel Ltd v Telco Holdings Ltd; Macrossan’s patent application [2007] 1 All ER 225