Software implemented business methods found to be generally patent ineligible in Australia

Computer implemented business methods get the chop
The Full Court of the Australian Federal Court has published the much-anticipated decision Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 117 (“RPL”).

The invention related to software on a computer server that remote users interacted with over the Internet.  As such, this is a significant decision because the conclusions should apply to many business methods being created today that similarly involve the Internet and a computer running software. My understanding of the decision, however, is that it does not suggest that inventive new algorithms that improve the function or use of a computer are patent ineligible.

Many had hoped that RPL would moderate an earlier decision of the Full Court, Research Affiliates LLC v Commissioner of Patents [2013] FCA 71 (“Research Affiliates”).  That decision found that a computer-implemented method of determining the quantity of [financial] securities to be included in a portfolio of securities is not patentable subject matter– that is “not a manner of manufacture” in the legal language of Australia.

The claims considered in Research Affiliates weakly tied the computing machine features to the claim, merely reciting the method being implemented in a computer system having at least one processor. Perhaps, then, it did not surprise many patent attorneys that the Research Affiliates patent was found invalid. Research Affiliates, however, provided the patent office with increased powers to invalidate patent applications that some patent attorneys believed should be patentable.

The invention considered in RPL 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, for example a TAFE course.  Here is claim 1:

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.

I have underlined the computing features. The computing features are better integrated in the RPL claims than the Research Affiliates claims, however their Honours were of the view that the claims appear to recite a generic computer implementation.

Their Honours where of the view at paragraph 96 that:

A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can be broadly be described as an improvement in computer technology. ...  Where the claimed invention is to a computerised business method, the invention must lie in the computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well-known and understood functions[emphasis added]

RPL continues this theme at paragraph 112:

... it is necessary to understand where the inventiveness or ingenuity is said to lie .... it is apparent that, other than the integers providing that the computer process the criteria to generate corresponding questions and presents those questions to the user, the method does not include any steps that are outside the normal use of a computer. [emphasis added]

This statement may have profound changes in the way that patent claims in Australia are assessed for subject matter eligibility and appears to be similar to the approach now used in the US following the US Supreme Court’s decision Alice [1]. 

Broadly speaking, in Alice, the first step when considering the eligibility of a claim to software and computer implemented inventions is to ask if the claim is directed to an abstract idea, and if so does the claim recite additional elements to amount to significantly more than the abstract idea.  It will be interesting to see if the IP Australia adopts this 2-step process.

Long passages within RPL discuss the lack of any disclosure of or claim to a sophisticated algorithm.  This may suggest that the more “sophisticated” the software or computer implementation being claimed is, the more likely it is to be found patent eligible.

In light of the RPL decision, Australian patent applications for software and computer implemented inventions must include very detailed descriptions, emphasise sophisticated and new aspects of algorithms, and include non generic computer features in the claims.

[1] Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014)