On appeal, in Commissioner of Patents v Rokt Pte Ltd  FCAFC 86, the Full Court found that the primary judge erred in characterising the invention claimed in the patent application as a manner of manufacture. Their Honours also found that the primary judge erred in the manner in which he accepted expert evidence when determining whether the claimed invention was a manner of manufacture.
Their Honours considered the specification in some depth. Relevantly, they commented on the description in  as follows:
“It may be seen from the generality of this description that no aspect of the system configuration, or the component parts of the system, rises above the most general level of abstraction.“
In the consideration, the Full Court referred to the interpretation of section 18(1)(a) of the Patents Act 1990, which deals with the requirement of manner of manufacture, by the plurality in D’Arcy v Myriad Genetics Inc  HCA 35 (Myriad), in which the High Court set out that the definition of the allegedly patentable invention “depends upon the construction of the impugned claims read in the light of the specification as a whole and the relevant prior art.” This appeal called attention to that single enquiry in which the relevant prior art is the common general knowledge. It was pointed out that the Full Court matters of: Grant v Commissioner of Patents  FCAFC 120 (Grant), Research Affiliates LLC v Commissioner of Patents  FCAFC 150 (Research Affiliates) and Encompass Corporation Pty Ltd v InfoTrack Pty Ltd  FCAFC 161 (Encompass), all reiterated the importance of the task of characterising the invention claimed. This was described as a matter of substance, not merely of claim form, as set out in Encompass.
The principles of construction are set out in a helpful summary () taken from Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155 at . Relevant to this matter, the principles include:
- The proper construction of a specification is a matter of law (Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400).
- Experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning (Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 (Sartas No 1)).
- It is for the Court, not for any witness, however expert, to construe the specification (Sartas No 1).
The Court held that the primary judge “fell into error” by characterising the problem as one that lay in the realm of fact, and preferring the evidence of Professor Verspoor over that of Mr Ries. It was not possible for Professor Verspoor to “address and determinatively answer the legal question of the proper construction of the specification and characterisation of the claimed invention.”
The role of expert evidence is to place the Court in the position of the person acquainted with the surrounding circumstances as to the state of the art and manufacture as at the priority date (Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at ). It was not apparent that the primary judge gave consideration to the principles of construction and that was held to be an error in approach.
In Research Affiliates, the Court distinguished between the “mere” use of a computer and the use of a computer involving a specific effect being generated or an improvement in the operation of, or effect of the use of the computer. Their Honours set out that the use of an abstract idea or scheme in a “well known machine” is not sufficient to render the subject matter patentable simply because it gives rise to an “artificial effect”. The following passage from Encompass at  was found to be pertinent because it emphasises that the enquiry is to be made into the way a scheme is implemented:
“But even if for present purposes “entity matching” is taken to be a step in the claimed method, neither it nor the other steps, individually or collectively, amount to anything more than a method in which an uncharacterised electronic processing device (for example, a computer) is employed as an intermediary to carry out the method steps—where the method itself is claimed in terms which amount to no more than an abstract idea or scheme.“
That enquiry is to be made by a careful review of the specification to ascertain whether the invention is in substance any more than a scheme that uses computers in a generic way. Their Honours held that obtaining the opinion of Professor Verspoor did not address the question of the proper characterisation of the invention according to principles of the various authorities.
Professor Verspoor was first asked to consider: “What is the “substance” of the invention. In other words, what specifically lies at the heart of the invention?“. The primary judge adopted her answer. But according to Their Honours, the correct characterisation of the invention is “a matter of law, based on the construction of the specification that may, where appropriate, be assisted by the evidence of experts.”
Professor Verspoor was asked the second question: “Does the invention solve a technical problem?” The primary judge adopted her answer. However, Their Honours pointed out that Professor Verspoor and thus the primary judge was referring, inter alia, to the system architecture identified in figure 3 of the specification, but not in claim 1. Section 18(1)(a) asks whether the invention so far as claimed in any claim is a manner of manufacture. Professor Verspoor and the primary judge relied upon the technical problem and solution identified in the specification. They did not address the important question of whether the technical solution was claimed. The primary judge’s error was illustrated with reference to Professor Verspoor’s opinion on the role of computer software in the analysis. Referring to her evidence, the primary judge held that the invention modified a computer by improving its software so that the computer performed a different function or set of functions and was in effect an improvement in the computer. According to Their Honours, Professor Verspoor “was, understandably, not considering the question in the manner mandated by legal authority.”
In Commissioner of Patents v RPL Central Pty Ltd  FCAFC 177 (RPL Central), Research Affiliates and Encompass, the fact that software was used to perform a different and new function was not of itself sufficient to find a technical advance in the use of computers such that a mere business scheme was patentable because of its means of implementation. Even bespoke software may not achieve the threshold (Encompass at ). Professor Verspoor had concluded that a claim also reflected an advance if no computer had been programmed to enable the method. Their Honours said that this emphasised the distance between the legal approach to understanding the invention and that taken by Professor Verspoor, “and the danger in adopting an expert’s view without additional legal analysis.”
Professor Verspoor was asked the third question: “Is the use of a computer (or computers) integral to carrying out the invention, or could the invention be carried out in the absence of a computer (or computers)?” The primary judge adopted her View that the use of computers was integral to carrying out the invention. However, Their Honours explained that the question is not simply whether the claimed invention could not be implemented other than by the use of computers. Citing Encompass at , a “claimed method that is unpatentable does not change its legal character merely because it is implemented by the instrumentality of a computer.”
The fourth question asked of Professor Verspoor was whether “the invention involves steps that foreign to the normal use of computers (as at December 2012)?” Her answer was that the method was an answer to a technical problem that had not been solved by computer technology before. The primary judge accepted this and found that the invention drew together different streams of information and then put them together and worked with them in a way that was new, making a combination that was new. Their Honours set out that the steps are foreign to the normal use of computers only in the sense that they were not previously performed by a computer. They said that this was not the same as saying that a computer would not normally be used to perform such steps. Rather, the expert evidence showed that the scheme could only be implemented by the use of computer technology. Thus, the answer to the fourth question did not add to the answer given in response to the third question.
Their Honours set out that the specification does no more than describe the architecture of the hardware in a general sense. The specification set out that the method may be implemented on any form of suitable server computer. On its face, the specification describes a solution to a problem in marketing relating to insufficient engagement. These factors did not involve the use of computer technology other than as a vehicle to implement the scheme. Their Honours noted that claim 1 provides no content to suggest a difference conclusion:
“Despite its length and detail, it contains no integer that serves to characterise the invention by reference to the implementation of the scheme beyond the most general application of computer technology utilised in an online environment.”
According to Their Honours, the level of abstraction at which the claim is expressed “demonstrates that it does no more than provide a list of steps to be implemented using computer technology for its well known and understood functions.” There was nothing in the specification that indicated otherwise to the Full Court. At most, the specification set out a list of steps that comprise a list of general instructions to write software. Their Honours set out that the language of the specification and the broad statements of steps required to be taken in claim 1 do not take the invention further than a scheme using well-known and understood functions of computer technology. The position is not distinguishable from that in Encompass, which is reported here.
It has become clear that a patent specification covering a computer-implemented method or process is vulnerable to revocation for lack of subject matter if it does not set out technical detail in any depth. As we reported, software should be characterised, if possible, in such as way as to emphasise the technical nature of the software. In other words, those features of the software that result in the processor working in a non-conventional, preferably complex, way should be elucidated. A “black box” approach to electronic processes may very well lead to a set of claims that do not define patentable subject matter.
It is understandable that a drafter might wish to ensure that patent cover extends broadly, particularly given the benefits of cross-platform commercialisation. However, the patent drafter still needs to ensure that the specification does more than simply provide a set of non-technical instructions to the reader. Technical information such as pseudo-code, detailed flow charts and algorithms all help to indicate that the invention makes a substantive, technical contribution to the field that is commensurate with the scope of the protection sought by the Applicant.