The Background
RPL Central’s Australian innovation patent no. 2009100601, related to a “method of gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard”.
The claimed invention was initially held to be patentable by the IP Australia during examination and then subsequently held not to be patentable by IP Australia during opposition proceedings.
RPL then successfully appealed to the Federal court in that IP Australia’s decision was overturned by Judge Middleton.
IP Australia then further appealed the decision to the Full Federal Court who reversed Judge Middleton’s decision by holding that the claimed invention was not patentable.
Why is this case important?
This case is important because there has, for some time, been uncertainty as to whether software and computer implemented business methods are patentable in Australia.
Software related and computer implemented business methods are often highly commercially valuable and inventors and patent applicants seek clarity on whether these commercially valuable inventions may be protected.
As can be seen from the conflicting decisions above, the answer to this question is not clear cut. Now, while their Honours in this case stated that they would not state precise guidelines as to what makes software patentable, they did offer some guidance as to deciding on software patentability.
Out with the old inextricable linkage test
In our previously discussed Full Federal Court decision of Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 it was held that the relevant test was whether the steps of the method where inextricably linked to the computer. In other words, the test was whether the invention could be performed manually, such as by hand, even if it were less efficient.
Their Honours seemed to agree with IP Australia’s argument that the speed and power of modern computers make them a fast and efficient tool for businesses and few business processes are performed without the use of a computer. IP Australia said that therefore computers could be said to be inextricably linked with the majority of new business methods and therefore that that this test alone cannot be sufficient.
IP Australia further urged their Honours to reject the test as to whether a person could implement the scheme without a computer or not.
The new test: Ingenuity in implementation
Their Honours stated that computer-implemented business method can be patentable where the invention lies in the way in which the method is carried out in the computer if some ingenuity is implemented in the way in which the computer is utilised.
Patentability lies in the ingenuity of the computer implementation
For the present case, the claimed invention has the computer automatically generate 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.
However, their Honours said that such automatic generation of questions is easily programmed in that the specification states that computer simply prepended a series of prepared words the user information to turn the statement into a question and that such is simply normal use of a computer that could easily be implemented with a macro or the like. They complained that the computer does not evaluate the user’s input to provide the answer and is not functioning in the nature of an adviser or an artificial intelligence. They pointed out further that the specification acknowledged the limited processing role of the computer by stating that answers could alternatively be mailed in.
It is not a patentable invention simply to “put” a business method “into” a computer
The crux of their argument is that 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 but that something more than that is required.
Ingenuity vs Inventive step?
Unfortunately their Honours did not state how much ingenuity is required other than stating ambiguously that it is more than “normal use of a computer” – giving examples such as computer decision-making and artificial intelligence.
This furthermore begs the question as to what is the difference between ingenuity and inventive step? As you may know, inventive step (nonobviousness) is a requirement for patentability and asks the question whether the points of difference would have been obvious to the skilled person. Measuring inventive step has clear guidelines developed by our courts, taking into account such factors such as the knowledge of the person skilled in the art, the state of the prior art and the like.
Ingenuity however is hitherto unknown and untested and therefore disadvantageously and unfairly subjects patent applicants to subjective judgement calls by examiners as to whether the computer implementation is sufficiently ingenious or not without adherence to any sort of guidelines other than considering the ambiguous test of whether such is “normal use” of a computer.
The current state of play
As is now clear, software related and computer implemented business method patent specifications must be drafted to show something more than simply putting a business method “into” a computer. The specification must describe in detail the ingenuity involved in programming the computer which extends beyond conventional or normal use of a computer such as searching, retrieving, presenting information and the like.
As such, the present considerations as to patentability of computer implemented business methods in Australia may be simplified as follows:
Patentable subject matter in Australia flow diagram
As can be seen, Australia is now more aligned with the UK wherein a “technical contribution” is needed to make a potentially excluded thing patentable. For those inventions which are not sufficiently technical, ingenuity in implementation is required.
For the present case, if the specification had described the questions being generated in a more intelligent manner (over and above merely prepending prepared statements) or if the computer had analysed or interpreted the answers in some meaningful way, then the ingenuity test could perhaps have been satisfied such that the claimed invention were then to be patentable.
How Patentec can help
Patentec specialises in computer implemented inventions in that our attorneys have experience from working as software engineers and who are therefore able to readily grasp software concepts so as to prepare technically thorough specifications showing ingenuity in implementation to maximise the patentability of patent applications.
Our attorneys have the experience from having successfully patented software related inventions across a wide range of technologies ranging from website interfaces to artificial intelligence platforms.
If you would like to discuss the patentability of your software related or computer-implemented business method, please contact us today to arrange a free consultation.
