In Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223, the Full Federal Court has refused to grant leave to appeal from a decision that an invention claimed in two Australian innovation patents (2017100560 and 2017100943) was not patentable subject matter.
In the first instance decision, which we wrote about here, McKerracher J found that Repipe's inventions were ineligible for patent protection, mainly due to the absence of "meaningful technical content" in the patent specifications.
This Full Court decision emphasises the requirement for computer-implemented inventions to constitute an advance or improvement in computer technology to be patentable subject matter. It also highlights the difficulties associated with amending a specification during proceedings to address allegations of a lack of patentable subject matter, and thus the importance of having a carefully drafted specification.
The requirement for an "advance in computer technology"
The Repipe invention relates generally to a method involving a central server and mobile devices to deal with occupational health and safety risk management information for jobs (such as plumbing tasks) performed in the field.
In denying leave to appeal McKerracher J's decision, Perram J stated (with Nicholas and Burley JJ agreeing) that although he had "no difficulty in accepting that the invention is useful", his Honour was "unable to see how it constitutes an advance in computer technology". In accordance with previous decisions of the Full Federal Court,1 the claimed invention was found not to constitute patentable subject matter, but rather "a deployment of existing computer technology for a useful purpose".
Perram J indicated that patentable subject matter can exist in relation to a computer implementation using a server and mobile device, refusing to exclude the possibility of a particular use of a mobile device with a server amounting to "an actual advance in computer technology" rather than "a mere use of that technology". To illustrate this point, Perram J referred to two previous cases where the Federal Court "upheld the patentability of computer-implemented inventions", clarifying that "[i]n both cases, the inventions could broadly be characterised as an improvement in computer technology".2
However, his Honour considered that Repipe's claimed invention could not satisfy the requirement for an advance in computer technology, noting that the invention solved a problem in the field of business operations rather than the field of computer technology.
Can lack of patentable subject matter be remedied by amending the specification?
Repipe attempted to address the first instance decision that its invention was not directed to patentable subject matter by applying to the Court under s 105 to amend its specification. However, Perram J considered this approach to be "inherently unsound", noting that "[t]he question of how the invention was to be characterised for the purpose of assessing patentability was to be determined as a matter of substance not form". His Honour found that "[a]n invention which did not broadly represent an advance in computer technology could not by amendment be transformed into one which did" - not least because amendment of a specification could not give rise to patentable subject matter without causing the specification to claim or disclose added matter in contravention of s 102(1).
What can we learn?
To avoid patentable subject matter invalidity issues, it is important that the original specification is well drafted. This decision demonstrates the difficulties with relying on amendments to address patentable subject matter issues during proceedings. It also suggests that patent specifications for computer-implemented inventions should be drafted with an advance or improvement in computer technology in mind.
The approach to patentable subject matter taken in Repipe aligns with that recently approved by the Full Federal Court in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC, which we wrote about here. A specification should clearly demonstrate an advance in computer technology from the time of filing, as a later attempt to amend a specification to address patentable subject matter issues may contravene the s 102(1) prohibition against added matter.
Footnotes
1. Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86; Encompass Corporation Pty Ltd v Infotrack Pty Ltd [2019] FCAFC 161; Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150; Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177.
2. See International Business Machines Corporation v Commissioner of Patents [1991] FCA 811; CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 396.
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.
