06 September, 2013
Spruson

Software & Computer Related Inventions – The Pendulum Swings Back

Software & Computer Related Inventions – The Pendulum Swings Back

Australian patent law over the past 20 years has been quite dynamic as to what constitutes proper subject matter for patenting, or a “manner of manufacture” as it is called in countries which derive their laws from the Statute of Monopolies 1623 (Imp.).

Significantly, since their decision in Invention Pathways Pty Ltd [2010] APO 10 (21 July 2010), the Australian Patent Office has often rejected patent applications for inventions essentially founded on user-operated software applications that are provided to and executed on an ordinary general purpose computer. Typically, the Australian Patent Office took the position that the computer, or the physical effect involved in its use, was not central to the operational purpose of the method being claimed for patenting and thus the incorporation of limitations regarding the computer in the claim were not considered by the Australian Patent Office to place the claimed invention in the realm of proper subject matter.

The position of the Australian Patent Office was generally affirmed in the decision of Research Affiliates LLC v Commissioner of Patents [2013] FCA71 (13 February 2013) where, at paragraph [0072], Emmett J. noted that:

“The implementation of the method of the claimed invention by means of a computer, at the level articulated in claim 1, is no more than the modern equivalent of writing down the index on pieces of paper. On the face of the specification, there is no patentable invention in the fact that the claimed method is implemented by means of a computer. The specification asserts a patentable invention, not in the use of the computer, but in the particular series of steps that give rise to the generation of the index. Those steps could readily be carried out manually. The aspect of computer implementation is nothing more than the use of a computer for which it is suitable. That does not confer patentability.”

The author observes that there is no general exclusion to manual performance and many a method has been patented that could be performed manually.

In the decision of RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871 (30 August 2013), Middleton J. of the Federal Court considered the patentability of a method and system for automated collection of evidence of skills and knowledge. The invention related to a computer implemented method of identifying skills and qualifications necessary for particular competency requirements. The invention involved the presentation of questions to users of computers and the receipt of responses and the presentation of further questions in response thereto ultimately providing an assessment as to the qualifications and assessment of suitability of the user.

Significantly, the Court quashed the approach of the Australian Patent Office in respect of centrality of purpose stating, at paragraph [0147]:

“First it must be said that I do not accept that the Australian decisions that are binding upon me in respect of this issue – NRDC1, CCOM2 and Grant3; – expressly import any such requirement of substantiality of or centrality of physical effect. The Courts in those cases did not expressly identify a substantiality or qualitative assessment criterion as being part of the manual of manufacture inquiry. Nor do I accept the Commissioner’s submission that the requirement is merely the function of the application of these decisions “as properly understood”.

The court also made reference to United States authorities in respect of these matters, notably the decision of Re Bilski4. The court held that the US decisions were “at best …merely persuasive” and that the Australian decisions were sufficient for it to develop a final determination. This Australian approach is particular encouraging in view of the distinctions between the Australian and US courts in respect of the recent Myriad decisions5.

In Research Affiliates the Court had great difficulty in appreciating the invention due to a lack of detail of the manner in which the invention was implemented in the computer, commenting that the evidence provided at the trial included substantially more information than was contained in the patent specification (Research Affiliates at [068]). The Court in RPL was able to distinguishResearch Affiliates noting, at paragraph [172] that:

“As I have already set out in some detail in these reasons, the specification and claims in issue in this case provide significant information about how the invention is to be implemented by means of computer. The computer is integral to the invention as claimed in this proceeding. Accordingly, I do not consider that the conclusion reached in this case is at odds with what his Honour concluded inResearch Affiliates. I need say nothing further as to the correctness of the actual decision in Research Affiliates.”

In reaching this conclusion the Court in RPL was clear that the specification should be considered as a whole and that it was not appropriate to dissect the invention into component parts [at 118].

The clear import of these decisions is that computer related inventions should be patentable in Australia where the invention is implemented by means of software executing on an ordinary general purpose computer. The description of the implementation and operation of the software in the computer and in associated components should be appropriately thorough and sufficient to clearly support the full scope of the claims for which monopoly protection is sought. Accordingly, the pendulum would appear to have swung back in support of patent applicants.


References:

1NRDC v Commissioner of Patents (1959) 102 CLR 252
2CCOM v Jiejing (1994) 51 FCR 260
3 Grant v Commissioner of Patents (2006) 154 FCR 62
4 Re Bilski 545 F.3d 943 (Fed. Cir.2008)
5Cancer Voices Australia v Myriad Genetics Inc [2013] FCA 65 (15 February 2013) – patent upheld;Association For Molecular Pathology v Myriad Genetics 569 US 12-398 (2013) – patent revoked


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