Australian Appeals Court Rules Computer-Implemented Invention Ineligible for Patenting

The Full Court of the Federal Court of Australia has handed down its judgment in Commissioner of Patents v RPL Central Pity Ltd [2015] FCAFC 177, unanimously ruling that the claimed invention does not constitute a patent-eligible ‘manner of manufacturer’ under Australian law.

The patent at issue relates to a computer-implemented invention (i.e. a so-called ‘software patent’) in which a computer system is used to centralise and automate mechanisms for prospective students to provide evidence of their prior education and experience for the purpose of potentially receiving course credit under a ‘recognition of prior learning’ (RPL) procedure.

The court determined (at [37]) that claim 1 of the patent involves:

  • ‘using a computer to retrieve the criteria using the Internet. This involves the user using conventional web-browser software;
  • the computer processes 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 are presented;
  • the individual answers the questions and, if he or she chooses to do so, uploads documentation from his or her computer.’

Following its own earlier reasoning in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, the court found the claimed method to be, in substance, the implementation by generic computer technology of an unpatentable idea or business method:

‘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.’ (at [110]).

This decision is likely to have a substantial impact upon the criteria against which patent-eligibility of computer-implemented inventions is assessed in Australia.  Watermark has been involved in the case from the outset, and is well-placed to provide advice on the patentability of software-based innovations in light of these developments.