As if to defy Newton’s second law, the metaphysical pendulum charting the state of the law in Australia on the patentability of software and computer-related inventions has been stopped dead.
In an article of 6 September, Lee Pippard of this firm reported on the decision of the Federal Court of Australia – RPL Central Pty Ltd v Commissioner of Patents  FCA 871 – favourable to the patentability of certain subject matter relating to computers, software and computer-implemented methods. As Lee pointed out, the RPL decision is somewhat at odds with a decision earlier this year by a different judge of the same court: Research Affiliates LLC v Commissioner of Patents  FCA 71. (Research Affiliates held that the computer-implementation of a method otherwise able to be performed by pen and paper is not patentable since this is a situation of merely using a computer for the purpose to which it is suited. RPL,contra, held that computer-implemented methods are patentable where the supporting description is sufficiently detailed.) While the judge in RPL was able to distinguish Research Affiliates on the facts, His Honour went on to observe “I need say nothing further as to the correctness of the actual decision in Research Affiliates” (at [172). The dissent is clear.
Both RPL and Research Affiliates were first judicial reviews of decisions of the Commissioner of Patents to refuse/revoke a patent application/innovation patent, and both these decisions have been appealed1 to the Full Federal Court (i.e., an appellate panel of three judges). Such appeals require special leave of the court to proceed. The two cases are being dealt with by the court at arm’s length: the ‘special leave’ application in Research Affiliates is due to be heard on 18 November, while RPL has been adjourned until the former is decided. The author’s guess is that the Full Court will grant leave for the appeal to proceed on the basis that there is an important question of law to resolve, not the least because the two cases are in conflict. But the path towards resolution of the apparent jurisprudential conflict between the two cases is long. It is perhaps optimistic to expect one, let alone both substantive appeal decisions to be handed-down before mid-2014. Further appeals to the High Court are not out of the question.
Meanwhile, back at the Patent Office coal-face, applications for inventions intersecting/overlapping with the RPL and Research Affiliates decisions remain active within the examination process. The Patent Office has adopted the positions that:
- Examiners will decide whether the claimed subject matter of an application undergoing examination is closer to the factual subject matter of the RPL or the Research Affiliates case law.
- Given that the two decisions are of equal standing as authorities, and because both are being appealed, examination will continue on the basis of the current practice (i.e., the law as stated in Research Affiliates) until the higher court's rulings are handed-down.
- Applicants are being actively encouraged to delay the course of examination (“preserve their interests pending clarification of the law”).
We see a slight disconnect between positions 1 and 2, in that if the claimed subject matter being examined is closer to the facts of the (favourable) RPL case, will Research Affiliates be applied nonetheless?
There is an impost with position 3 as well. There is no administrative mechanism to ‘stop the examination clock’. For most affected applications undergoing examination, there is a maximum 21 month period within which to achieve acceptance (‘allowance’ in US terms), else the application will lapse. Rights in the invention can only be preserved in such a circumstance by filing a divisional application (‘continuation application’ in US terms). An unfortunate consequence of having to file a divisional application is that the recently promulgated higher standards on inventive step and ‘support’ are triggered. Additionally, extension of time official fees are payable in the last nine months of that period. That is, the financial burden of keeping an application alive falls on the hapless applicant. The only comfort for applicants is that the Patent Office is unlikely to initiate examination of any applications in the general field until the appeals are resolved.
The two appeals can’t be decided quickly enough!
Author: Robert Miller, Principal
1Research Affiliates is the appellant in one case, and the Commissioner in the other.