Two software patents were found to be invalid in the decision of Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956, delivered on 22 November 2019 by Justice McKerracher of the Federal Court of Australia. The Court ruled that the inventions, both consisting of computer-implemented methods, were ineligible for patent protection because they involved a generic computer implementation of a business method. The absence of 'meaningful technical content', especially computer code, from the patent specifications was cited as a key factor in the decision.

The inventions' computer-based methods for worksite risk management

The patents in question were two Australian innovation patents (2017100560 and 2017100943) owned by Repipe Pty Ltd (Repipe). The patents claimed similar inventions, originating from the same divisional parent application (a pending Australian standard patent application).

Both inventions aimed to improve how risk management procedures are performed by field workers, such as workers on construction or mining sites. Typical risk management procedures consist of paperwork that an employee is supposed to complete before commencing a job. The inventions dealt with the inherent shortcomings of such paper-based self-assessments by providing an electronic, centralised solution.

According to the method of the 560 patent, an employee would be able to download risk management information (e.g. permits, plans, and equipment information) onto a personal computing device and to complete a risk management document using the downloaded information. A record of the document would then be uploaded to a database. The method of the 943 patent differed in that the identity, job, and role of the employee would first be determined by the portable computing device, and relevant risk assessment information would be downloaded accordingly.

Claim 1 of the 560 patent was as follows:

A method of providing information for risk management to a user of a portable personal computing device performing a job in the field, said method comprising:

  • selecting a document to be completed by the user related to a job to be performed by the user;
  • downloading information to the portable personal computing device;
  • displaying the downloaded information for selection of items in the information so as to complete the selected document; wherein the downloaded information comprises information provided by one or more other users having an administrative role and information provided by one or more other users having a field worker role;
  • receiving input to the portable personal computing device, wherein the input comprises selection of one or more of the items in the information, and/or the input comprises providing new information;
  • uploading the input, whereby a record of the input is stored in relation to the selected document, and the new information is added to the information to be downloaded by other users.

Background to the case

Repipe brought the present case before the Federal Court after its patents failed to pass examination by the Australian Patent Office and after an unsuccessful hearing before a delegate of the Commissioner of Patents. It was not disputed that both inventions were novel and involved an innovative step. The only issue was whether the inventions were a 'manner of manufacture'.

The concept of 'manner of manufacture', as construed by the courts, delineates what is patent-eligible in Australia. The principles determining the patent-eligibility of software inventions have largely been set by the decisions of Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (see our article here), Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (see our article here), and Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (see our article here).

The Court's decision: No meaningful technical content

To reach its decision, the Court asked 'whether or not the method [of each invention] merely require[d] generic computer implementation of a scheme or abstract idea'.

In answer to this question, the Court noted that there was 'no meaningful technical content' in either patent specification, despite the fact that the claims of each patent did detail the functionality of a computing device. As the Court said, '[i]t is not sufficient to rely on the form of the claims rather than their substance'. The Court also underscored the absence of computer code from the specifications; as expressed at paragraph [93] of the judgement:

No specific application software has been claimed or even identified in any claim of the Patents. No computing programming logic or code is disclosed anywhere in the Patents. The substance of both inventions is a mere scheme that can be implemented using some unidentified software application to cause a server computer and smartphone to perform the steps identified in the claim. To implement the scheme, a reader must use his/her own skill and knowledge to write an appropriate software application. No such application is disclosed in the Patents.

Finally, the Court remarked that the inventions solved a business problem (i.e. compliance with work health and safety procedures), not a technical problem in the field of computing. This alone would likely not have prevented the inventions from being patented. The main obstacle was that the inventions employed nothing more than 'standard' computing functions and 'standard' hardware, as evidenced from the lack of technical content in the specifications.

In conclusion, the Court ruled that neither invention was a manner of manufacture.

Expert submission on link between computer code and computer functionality

Repipe and the Commissioner of Patents both supported their submissions with evidence from experts in the fields of computer systems and databases.

It is notable that the Commissioner's own expert acknowledged that Repipe's patent claims, while not including computer code, outlined the functionality of a computer programmed to perform the invention, and that such a statement of functionality was critical to the process of software development.

Repipe relied on this admission to contend that the substance of its inventions was the functionality defined by the claims rather than a specific instance of computer code. The argument was ultimately unsuccessful.

Take-home points

The Court's approach in the present case seems to conform with that employed by existing authorities, which have affirmed the need to elevate the substance of the invention over the words of the claims. A highlight of the present case is the emphasis placed on the absence of computer code in the patent specifications, which the Court viewed as indicative that the inventions only required generic computer implementation. This suggests that, in certain instances, a software patent may be bolstered by the inclusion of computer code in the specification, although whether or not the invention is actually patent-eligible remains a matter of substance over form.

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