 |
| 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)
