The AU PTO is still granting patents for computer implemented, software and IT inventions. BUT, determining eligible subject matter has become more complex over the last eighteen months. The roots of the story are embedded in the 17th century but the latest chapter starts on a summer’s day in December 2015. This was the day that the Federal Court of Australia (FCA) released the RPL[i] decision. That decision sought to clarify the requirements for patent eligible subject matter or, as it is called here “manner of manufacture”[ii]. While the FCA made clear that “mere” business methods or schemes are not, and never have been, patentable, it did give some hope for people wishing to protect innovations in the software and IT areas. Computer-implemented inventions that solve a technical problem, whether within a computer itself or in a technical field, remain patentable. But just how technical is technical? What sorts of computer-implemented applications are permissible?
RPL is about a patent application that the respondent RPL Central Pty Ltd had lodged for a computerised method and system for assessing an individual’s eligibility to be awarded a recognised qualification standard. The RPL webserver prompts users to answer questions to determine if they have sufficient experience to be awarded a qualification by an educational or government agency. RPL had programmed the webserver to generate the questions by parsing through the qualification requirements, which it had digitized, and automatically converting them into questions. The bad news for RPL was that the FCA found that claims for that method and system , were not patent eligible (i.e. not a “manner of manufacture”). The FCA concluded at par.  that: the invention is to a scheme or a business method that is not properly the subject of letters patent.
The FCA’s decision surprised many patent practitioners and commentators. Please bear in mind that lack of inventive step was not an issue as the patent was an innovation patent for which there was no inventive step requirement.
The FCA’s reasoning was that the problem may be one of confronting the “maze” of available information concerning the RPL[iii] of different Units of Competency in different institutions, but the solution to that problem, to be patentable, must involve more than the utilisation of the well-known search and processing functions of a computer, for example an invention in the way in which the computer is utilised.
It therefore appears that the FCA deemed the server’s ability to convert the qualification requirements automatically into questions to be no more that the use of well-known search and processing functions.
The Australian Patent Office’s Manual of Practice and Procedure presently sets out[iv] that, in considering the substance of a claimed invention that is computer-implemented, it is necessary to go beyond the form of the words used and look to understand the invention in the context of (a) the patent specification as a whole; and (b) the relevant common general knowledge (i.e. in the field of the invention). This principle of “substance of the invention” appears to have flowed in part from the reasoning of the US Supreme Court’s decision in Alice Corporation[v] (see RPL Central at last bullet point in par. ). In contrast, traditionally in Australia the wording of the claims has been of utmost importance unless there is some ambiguity or lack of clarity in the claims in which case it has been deemed reasonable to resort to the body of the specification.
So, where do we stand? Well at present the APO’s MPP sets out the following considerations, which have been cross-referenced below to the reasons in RPL Central, viz:
- Is the contribution of the claimed invention (over the accepted common general knowledge) technical in nature: par. , first bullet point;
- Does the invention solve a technical problem within the computer or outside the computer, that results in an improvement of the functioning of the computer per se: par , second bullet point;
- Does the claimed method merely require a generic computer implementation having a standard operation: par. ;
- Is the computer merely an intermediary or tool for performing the method, whilst adding nothing to the substance of the idea of the alleged invention: par.  and in par. , last bullet point;
- Does the ingenuity of the invention reside in a physical phenomenon in which an artificial effect can be observed rather than in the scheme itself: par. ;
- Does the alleged invention lie in the way in which the method is carried out in a computer: par. ; and
- Does the invention lie in more than the generation, presentation or arrangement if intellectual information: par. .
These considerations are a useful, practical guide as to the application of the doctrine of “substance of the invention” as an adjunct to the well-known requirement that a patentable invention must be an ‘artificially created state of affairs of economic significance‘ as articulated by the High Court of Australia in NRDC[vi] – since this test is not conclusive of patentability: RPL Central at pars -.
Since the Full Court’s decision, the Commissioner’s delegate has considered the manner of manufacture in a number of applications claiming computer-implemented inventions. In an earlier decision, it is observed that in Aristocrat’s Application No. 2013-204646[vii] directed to a gaming machine and a method of using the machine, the delegate found for the applicant in that:
‘the substance of the invention as ‘the presentation of game information in a way that allows the game and bet denomination to be selected in a single action. It is apparent that this would achieve a practical and useful result by simplifying the use of the gaming machine by the player. Looking at the relevant considerations, the invention appears to require only generic computer implementation. However, it does not appear that it was normal (at the priority date) to configure a gaming machine interface in this particular way. Here information is located in a particular position and functionality is generated by the use of this positional location to improve the gaming machine. The contribution is technical in nature, and achieves a practical and useful result. On balance, I am satisfied that the claimed invention is a manner of manufacture.’ See par. .
In contrast, a later decision also relating to computer-implemented or electronic gaming machines concerned Aristocrat’s Application No. 2014-100124[viii] with claims directed to a gaming machine. However, the delegate on this occasion decided against the applicant:
‘that the substance of the claimed invention is within the specific arrangement of playable games of a particular type and the corresponding associated sets of bet denomination.’ at par. ; and
‘the substance of the claimed invention is more than an abstract idea. Further considering the claimed invention as a matter of substance, I find that its contribution is not technical, it does not solve a technical problem, and although it might “maintain or increase player enjoyment” it does not result in improved functioning of the gaming machine. The claimed invention does not produce a practical and useful result, and it cannot be described as an improvement in computer (or computer-based gaming machine) technology. The computer implementation is generic without any ingenuity or steps foreign to the normal use of the computer or the player interface’ at par. .
When the substance of the invention claimed is considered in terms of the problem being addressed in the complete specification, and against the background of the common general knowledge in the relevant technical field, and it meets (on the balance of probabilities) the indicative considerations set out above, the invention will generally be found to be patentable.