This post is about a lower court decision that is currently under appeal. While we wait for the outcome, which may result in a significant change in IP Australia practice, it's worth revisiting the decision of first instance.
In RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871, the invention by RPL Central is a method of posing questions via the internet and using computers to determine if prior learning should be recognised as meeting a recognised standard, for example a TAFE course.
Justice Middleton used the principles established by NRDC to reject the notion that a computing machine running software merely generates information belonging to the fine arts. Rather, he found the invention had an industrial, commercial or trading character because it solved a problem in a field of economic endeavour – the education section of the economy. Justice Middleton also found that there was an artificially created state of affairs provided when the method was executed by a computing machine.
Justice Middleton noted he did not accept as argued by the Commissioner that Australian law requires a manner of manufacture to exhibit a physical effect that is substantial or central to the invention. Nevertheless, the invention defined by the claims would satisfy such a requirement if it did exist. His Honour found that the magnitude of the task performed by the invention and the express terms of the claims themselves mean that the computer is an essential part of the invention claimed, and was inextricably linked with the invention. Claim 1 is:
A method of gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard, including the steps of:
A computer retrieving via the internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
an assessment server presenting the automatically-generated questions via the internet to a computer of an individual requiring assessment; and
receiving from the individual via said individual’s computer a series of responses to the automatically-generated questions, the responses including evidence of the individual’s skills, knowledge and/or experience in relation to each of the elements of competency and performance criteria,
wherein at least one said response includes the individual specifying one or more files stored on the individuals computer, which are transferred to the assessment server.
Computing device features are prominent and numerous in claim 1. However, they are no more prominent or numerous than may be ordinarily be expected for a software patent. Again, we see importance of a detailed disclosure of the operation of the computer machine with respect to the method and the inclusion of computing machine features into the claims.
His Honour then distinguished his reasoning from that in Research Affiliates:
It appears that in reaching this ultimate conclusion, his Honour was influenced by [physicality requirements], and the fact that the specifications contained virtually no substantive detail about how the claimed method was to be implemented by a computer (at [68]). Accordingly, his Honour held that although the “mere use” of a computer necessarily carries with it the writing of information into the computer’s memory, “[t]he method of the claimed invention does not involve a specific effect being generated by the computer”. Neither the specifications nor the relevant claims disclosed how to produce the index in question – for example, how the data was to be accessed, or the nature of the processing, weighting or other tasks to be undertaken in the various steps (at [70]). His Honour considered that this was not sufficient in the circumstances to satisfy the requirements of the manner of manufacture inquiry.
It is on this basis that Research Affiliates [2013] FCA 71 can be distinguished from the case presently before the Court. 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 in Research Affiliates [2013] FCA 71. I need say nothing further as to the correctness of the actual decision in Research Affiliates.” – at 171- 172
His honours comments appear to be a veiled rejection of the principles set out in Research Affiliates.
In any case, incorporating computing machine features in the claims are prudent in light of his Honour’s comments distinguishing Research Affiliates.