Australia: Federal Court win on patents for software inventions

Last Updated: 16 December 2013
Article by Mark Williams

The Federal Court in RPL Central Pty Ltd ("RPL") v Commissioner of Patents ("the Commissioner") [2013] FCA 871 has held that a computer implemented invention can be patentable subject matter in Australia, particularly where there is substantial disclosure in the patent specification of how the invention is to be implemented on the computer.


This proceeding was an appeal from a decision by the Commissioner of Patents, stemming from an opposition proceeding against innovation Patent 2009100601, that the claims of this patent do not constitute a manner of manufacture under s 18(1A)(a) of the Patents Act 1990 (Cth) ('the Act').

Interestingly, this was not a ground raised during examination of the innovation patent, nor raised by the opponent, but rather raised and pressed by the Commissioner of her own volition.

As a result, this Federal Court decision focuses solely on manner of manufacture. Although the patent is an Australian innovation patent, the test for manner of manufacture is the same as for a standard patent.

The claimed invention

The claimed invention is directed to a system and method for gathering evidence for an assessment of an individual's competency relative to recognised standards – i.e. "Recognition of Prior Learning". The invention automatically generates a series of questions to be presented to the individual on their computer, and receives the corresponding responses from the individual via their computer interface. The received responses may be text based responses to the questions or may take the form of uploaded supporting documentation (including documents, audio or video). A copy of the specification may be found at

The specification includes eleven pages of description of the invention and five claims (noting that the application in an innovation patent which is limited to five claims) and six drawings. The drawings illustrate a computer system showing the operation of the overall system together with a number of pseudo code/method flow charts explaining the operation of the invention and the steps carried out by the computer system. Examples of the questions that may be generated and posed to the user are also provided.

Manner of manufacture: the judgment

The Court applied the key criteria relating to manner of manufacture articulated by the High Court in National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 ('NRDC') and elaborated upon by the Federal Court in CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 ('CCOM') and Grant v Commissioner of Patents (2006) 154 FCR 62 ('Grant'), as explained below.

Useful result

At [129] the Court found that RPL's claimed invention did produce a useful result in that it overcomes a difficulty involved in seeking out relevant education providers and enables the recognition of prior learning.

Vendible product

At [130] the Court found that the invention satisfied the "vendible" requirement of the "vendible product" test of NRDC (i.e. that the invention has utility in practical affairs) since the invention has application to the education sector of the economy.

At [133] the Court found that the invention satisfied the "product" requirement of the NRDC test as it did give rise to an artificially created state of affairs in the form of a physical phenomenon in which a new and useful effect is observed.

Physical effect

At [143] the Court was satisfied on the face of the specification that each of the steps of the claimed method and system requires or involves a computer generated process, and that there are a number of physical effects that occur in implementing the claimed invention. The Court also found that each of the computer-effected steps of the invention constitutes or gives rise to a change in state of or information in a part of a machine, and therefore produces a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation as required by the test set out in Grant v Commissioner of Patents (2006) F CAFC 120. More specifically, for instance, the steps of generating and then presenting questions to an individual creates an artificially created state of affairs on the individual's computer as data is retrieved and transformed into the questions.

Physical effect: concrete and central to the purpose or operation the claimed process (the Commissioner's position)

At [147] the Court did not accept the Commissioner's assertion that NRDC, CCOM and Grant imported a requirement of substantiality or centrality of physical effect, and rejected the Commissioner's submission that such a requirement is merely a function of the application of these decisions "as properly understood". The Court noted that none of NRDC, CCOM and Grant "articulated a separate or new requirement of substantiality or physical effect".

The Court was critical of the Commissioner's approach to the manner of manufacture inquiry – namely the notion that RPL's invention could be performed without the use of a computer and that, if one were to strip away the computer aspects of the claims, one would be left only with a method for performing an aspect of a business.

At [157] the Court noted:

'Even if this were true I do not accept that this is the appropriate way to approach the question of manner of manufacture. One should not subtract from the invention any aspect of computer implementation, and then determine whether what remains is the proper subject matter of letters patent.'

The Court also found at [159]:

'I do not consider it relevant that the invention in question does not involve steps which are "foreign to the normal use of computers", as asserted by the Commissioner. Such a requirement is not imposed by any of the binding authorities that were the subject of argument in this case, and I consider that to impose such a requirement strays dangerously close to the error identified in the primary judge's reasoning by the Full Court in CCOM.' (the error there being to ask whether what was claimed involved anything new and unconventional in computer use.)


Unfortunately, we are yet to see a change in practice at the Australian Patent Office as a result of this decision, and the Commissioner of Patents has filed an appeal against the decision to the Full Federal Court of Australia.

If the decision is upheld in the appeal, we may then see a change in practice at the Australian Patent Office that will result in less manner of manufacture objections being raised in relation to a computer not being central to the operation of the invention.

The take home message from this decision is that computer implemented inventions may be patent eligible subject matter provided a physical effect can be clearly identified. Detailed information about how the invention is implemented by means of computers should be provided in the description and in the claims to support an argument for patent eligibility.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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