Australia: Software patents in Australia: challenging times ahead

Last Updated: 22 December 2015
Article by Jack Redfern and Matthew Ward

The full Federal Court has introduced new and unexpected requirements for patentability of inventions in the information technology space in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177.,

In essence, the RPL decision boils down to the following statements of principle:

"A technological innovation is patentable; a business innovation is not"; and

"Simply putting a business method or scheme into a computer is not patentable unless there is an invention in the way in which the computer carries out the scheme or method."

Accordingly, it is fair to surmise that Full Court's position as follows: (i) where the underlying substance of an invention is "technological" in nature, there should be no question as to subject matter eligibility; and (ii) where that underlying substance is "business related", it is necessary to show a degree of invention in the manner by which computer implementation is achieved.

This convolution of subject matter eligibility and inventiveness has not previously been apparent in Australian law, and is reminiscent of the European position (where consideration of technical character forms part of inventive step analysis).  The decision leads to a degree of uncertainty in terms of: how and where to draw the line between "technological" and "business" innovations; and the appropriate principles to apply when assessing whether technological implementation of a business innovation involves a sufficient degree of invention beyond the abstract concept itself.  Additional guidance from the Courts would be helpful in this regard – it would be indeed unfortunate if the Patent Office were to use this decision as a means to reject a wide range of patent applications based on over-zealous "business innovation" categorisations and/or an expansive view of what might be considered to "generic use of a computer".

The Full Court's analysis, in this instance, involved abstracting the claimed invention into its most basic underlying concepts, and considering whether there is any ingenuity in applying those concepts to a computer environment.  Their observation was as follows:

'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.

The Full Court took it upon itself to consider the inventiveness of various individual aspects of the computer implementation in this case, including a searching step (in respect of which the Court concluded that "such searching, for example using Google, is an ordinary use of a computer") and the conversion of personalised information into questions (where the Court was concerned that the computer "is not functioning in the nature of an adviser or an artificial intelligence" and that the "limited role of the computer" related to "a series of prepared words to be prepended to the user information, to turn the statement into a question").

The approach of the Court in characterising the degree of "invention" in computer implementation seems to involve an unconventional approach to handling questions of fact.  In that regard, based on the Court's reasoning, questions of Manner of Manufacture are now inextricably tied to questions of inventiveness.  However, the Court felt it appropriate to consider issues of inventiveness without any reference to evidence, for instance evidence of what a person skilled in the art would have considered obvious as of the priority date of the application.  Surely, the same or similar principles for assessing inventiveness in the traditional manner should apply in this new context.  If the law in Australia is indeed going to shift to a place where Manner of Manufacture considerations are guided by determination of whether the implementation of a concept is in itself "inventive", then there should be a need to consider evidence as to the common general knowledge and position of a hypothetical the skilled addressee.  As a matter of basic principle, it is not the place of the Court to make its own uninformed determinations of fact, such as determinations as to what would have been "generic" in computer technology as of the priority date of the application, particularly given the glare of hindsight and the rate at which computer technology continues to advance.

The precise manner by which "invention in implementation" for business innovations will be assessed in practice remains a mystery.  One might suggest that an appropriate approach could be to consider, in the case of an invention in the "business space", whether the claimed manner of computer implementation is either: (i) a generic approach that would be realised simply by routine steps; or (ii) a particular one of multiple possible avenues of computer implementation, with the claimed avenue having particular (and potentially inventive) advantages over others.  From a practical standpoint, it will be necessary to await new examination directions from the Patent Office.  We will, of course, promptly advise our clients once the guidelines are issued.

It is possible that RPL will be appealed to the High Court, with any application for leave to appeal due to be filed early in the New Year. .  There are arguments to suggest that, even if the High Court were to agree with the general principles set out by the Federal Court (and there is no guarantee they would, given potential for reluctance to convolute subject matter eligibility and inventiveness), the Judges might be reluctant to find against RPL .  In particular, the High Court might be concerned by the absence of evidence upon which to base determinations of fact in relation to what indeed constitutes an invention in terms of computer implementation, as opposed to generic use of a computer.

In the interim, we are concerned that the decision in RPL provides the Patent Office with too much scope to refuse patent applications in the information technology space. We are eagerly awaiting any practice guidelines that the Office may issue in response to the Court's decision to further inform the recommendations we will make in respect of individual matters. In any event, there will likely be a need in a greater number of patent applications to refine and refocus the prosecution strategy to more clearly emphasize the technological features of the inventions and their implementation. There will also be a need to ensure specification drafting practices for newly prepared patent specifications are effective in: (i) conveying the technological nature of inventions; and/or (ii) establishing invention not only in underlying concepts, but also in the manner of computer-implementation of those concepts.

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.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Matthew Ward
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.