On 11 December 2015, the Full Court of the Federal Court of Australia in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 has confirmed that a scheme or idea implemented on a generic computer, using standard software and hardware, is unpatentable.
In essentially following and expanding upon the reasoning in its earlier Research Affiliates[1] appeal decision, the Full Court has provided some clarity about the patentability of computer-implemented inventions in Australia.
The Full Court’s decision means that:
- Where the claimed invention is to a computerised business method, the invention must lie in that computerisation and not in the business method.
- An invention does not become patentable merely by the extensive use of technical elements in the claims, or by a detailed disclosure of how those technical elements perform the invention in the specification.
- An invention must provide a “technical contribution” as is the case in the UK.
- A computer acting merely as an “intermediary”, namely configured to carry out the method but adding nothing to the substance of the idea, is not a patentable invention.
- Artificial intelligence software may be patentable.
Background to the decision
RPL Central’s invention was a method of gathering evidence for the purpose of assessing an individual’s competency relative to a recognised qualification standard. The claims extensively defined the use of a computer, the internet and a remote server in the performance of the method steps. The specification provided significant detail about how these technical elements operated and interacted to implement the invention.
In the first instance RPL Central decision[2], Middleton J found that RPL Central’s invention was patentable, and noted that the specification and claims in issue provided significant information about how the invention is to be implemented by means of computer, and that a computer was integral to the invention as claimed.
This was contrasted with the Research Affiliates first instance decision[3], rejecting the patentability of a computer implemented method for producing an index of security assets in which the only physical result generated was a computer file containing the index (simply a set of data), and the specification contained virtually no substantive detail about how the claimed method was to be implemented by a computer. In that decision, the Full Court considered that the invention involved ‘no more than the use of a computer for a purpose for which it is suitable’.
The Claims
RPL Central’s main method claim was as follows:
A method of gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard, including the steps of:
a computer retrieving via the internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
an assessment server presenting the automatically-generated questions via the Internet to a computer of an individual requiring assessment; and
receiving from the individual via said individual’s computer a series of responses to the automatically-generated questions, the responses including evidence of the individual’s skills, knowledge and/or experience in relation to each of the elements of competency and performance criteria, wherein at least one said response includes the individual specifying one or more files stored on the individual’s computer, which are transferred to the assessment server.
The Full Court found that claim 1 involves:
- using a computer to retrieve the criteria using the internet by a person using conventional web-browser software;
- the computer processing the criteria to generate corresponding questions relating to the competency of the individual to satisfy the elements of competency and performance criteria associated with the recognised qualification standard;
- those questions being presented;
- the individual answering the questions and, if he or she chooses to do so, uploading documentation from his or her computer.[4]
The Full Court found that, other than the integers providing that the computer processes the criteria to generate corresponding questions and presents those questions to the user, the method did not include any steps that are outside the normal use of a computer. Since the creation of the plurality of assessable criteria themselves were publicly know, and neither the presentation of the questions nor the processing of the user’s responses involved ingenuity themselves, the Full Court found that the claimed invention was an unpatentable scheme or a business method.
Considerations to take into account
The Full Court found that determining patentable subject matter is not a question of stating precise guidelines but rather of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent.[5]
However, the Full Court reiterated some of the considerations discussed in Research Affiliates[6] for assessing patentable subject matter:
- It is necessary to ascertain whether the contribution to the claimed invention is “technical” in nature.
- One consideration is whether the invention solves a “technical” problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
- Does the claimed method merely require generic computer implementation?
- Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea?[7]
“Technical contribution”
The Full Court looked to the UK Aerotel decision[8] in determining that a claimed invention must make a “technical contribution”. In that case, the subject matter was an interactive system whereby questions were asked, the answers incorporated in a draft and, depending on some particular answers, further questions were asked. It was held that, apart from the fact of running a computer program, there was nothing technical about the contribution and the method was for the business of advising upon and creating appropriate company documents.
In light of that decision, the UK Patent Office has adopted the following 4-part test for patentable subject matter:
(1) properly construe the claim
(2) identify the actual contribution
(3) ask whether it falls solely within the excluded subject matter
(4) check whether the actual or alleged contribution is actually technical in nature.
It remains to be seen whether the Australian Patent Office will seek a similar multi-part test or rather will apply a less structured approach to determining the “technical contribution” of an invention.
Ingenuity must be in the way in which the computer is utilised
The Full Court held that the fact that a method could not be carried out without the use of a computer cannot alone render the claimed invention patentable if it involves simply the speed of processing and the creation of information for which computers are routinely used. In those circumstances, the claimed invention is still to the business method itself. A computer-implemented business method can be patentable where the invention lies in the way in which the method is carried out in the computer. This necessitates some ingenuity in the way in which the computer is utilised.[9]
Implementation of an idea, and not just the idea itself, must form part of the invention.
The Full Court found that where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well- known and understood functions.[10]
The Full Court found that:
“RPL Central does not claim any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method. Accordingly, the ingenuity of the inventors must be in the steps of the method itself. The method does utilise the speed and processing power and ability of a computer but there is no suggestion that this is other than a standard operation of generic computers with generic software to perform a business method. This is the method of taking the information as to available criteria for Units of Competency and reframing those criteria into questions and presenting them to, and receiving the answers from, the user together with any documents that the user wishes to append. The 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. Indeed, no instruction as to such programming is provided in the specification other than the idea of turning the performance criteria provided by the NTIS into a question by prepending or otherwise inserting a form of words.[11]”
Artificial intelligence software may be patentable
The key aspect relied upon by RPL Central was the conversion of personalised information into questions, including asking for relevant attachments. The Full Court found that the computer was, in effect, operating as an intermediary in the user’s quest for an evaluation of his or her competency for a particular course and entitlement to obtain a qualification without participating in that course. However, the computer did not evaluate the user’s input to provide the answer.
Significantly, the Full Court found that the computer did not function in the nature of an adviser or an artificial intelligence. Rather, the programming allowed for a series of prepared words to be prepended to the user information, to turn the statement into a question.[12] This leaves the door open to patent protection being available for machine learning and other artificial intelligence software provided there is some ingenuity in the operation of that software.
RPL Central has until 8 January 2016 to apply for Special Leave to appeal the Full Court’s decision to the High Court of Australia.
Recommendation
In light of this decision, we recommend that patent applicants review the patent prosecution strategy for their computer-implemented inventions in Australia, particularly where a patent examination report has issued with a patentable subject matter objection.
If you have any questions about how the outcome of this case affects your current or future patent applications, please contact Ross McFarlane at ross.mcfarlane@pof.com.au, Raffaele Calabrese at raffaele.calabrese@pof.com.au or Mark Williams at mark.williams@pof.com.au
[1] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150
[2] RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871
[3] Research Affiliates LLC v Commissioner of Patents [2013] FCA 71
[4] Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177, para 37
[5] Ibid, para 98
[6] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150
[7] Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177, para 99
[8] Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application [2006] EWCA Civ 1371; [2007] 1 All ER 225
[9] Ibid, para 104
[10] ibid, para 96
[11] Ibid, para 110
[12] Ibid, para 109