The Federal Court has re-affirmed the need for the substance of an invention to be technical in nature in the matter of: Repipe Pty Ltd v Commissioner of Patents  FCA 1956.
Repipe Pty Ltd (“Repipe”) was the registered proprietor of innovation patent 2017100560 (the 560 patent) and 2017100943 (the 943 patent) that were both entitled: “Methods and Systems for Providing and Receiving Information for Risk Management in the Field”. A delegate of the Commissioner of Patents revoked both patents on the basis that the inventions claimed were not a “manner of manufacture” within the meaning of s 18(1A)(a) of the Patents Act 1990. This matter is an appeal from that decision.
The 560 patent claimed a method of providing information for risk management to some form of “personal computing device”. The method has a number of steps, which include:
- selecting a document to be completed by the user;
- downloading information to the device;
- displaying the downloaded information for selection to complete the document;
- receiving input to the device, the input comprising selection of one or more of the items in the downloaded information; and
- uploading the input, a record of the input being stored and the new information as a result of the upload being added to information to be downloaded by other users.
The 943 patent also claimed a method of providing information for risk management to a device. This method includes the following steps:
- identifying the user,
- receiving a list of possible jobs associated with the identified user,
- selecting a job to be performed by the identified user,
- downloading information related to the selected job to the device,
- displaying the downloaded information for selection of one or more indicia to complete a risk related dynamic document,
- receiving user input to the device relating to the selection of the indicia; and
- uploading the user input to the server.
McKerracher J provides the reader with a useful guideline for assessing whether an invention is a “manner of manufacture” within the meaning of s 18(1A)(a) of the Patents Act 1990.
His honour cited D’Arcy v Myriad Genetics Inc (2015) 258 CLR 334 (Myriad), in which it was held that monopolies are granted for inventions and not for the inventiveness of the drafting with which patent applicants choose to describe them. The matter must be looked at as a question of substance and effect must be given to the true nature of the claim. He also cited Grant v Commissioner of Patents (2006) 154 FCR 62, in which it was held that a business method must produce a “physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation”.
According to his honour, the consideration requires that attention be directed to the subject matter of the invention as a matter of substance. He referred to the more recent matter of Rokt Pte Ltd v Commissioner of Patents  FCA 1988 (see our post of 28 April 2019) in which Robertson J said:
“A mere business innovation is insufficient and a business method or scheme is not, per se, a proper subject for letters patent. Nor are abstract ideas. The issue is whether there is a technological innovation. Where, as here, the claimed invention is to a computerised business method, the invention must lie in the computerisation and it is not enough simply to put a business method into a computer. The search is for an improvement in computer technology…”
In both Commissioner of Patents v RPL Central Pty Limited (2015) 238 FCR 27 (RPL) and Research Affiliates LLC v Commissioner of Patents (2014) 227 FCR 378 (Research Affiliates), it was established that a method defined as a ‘computer-implemented’ method but not otherwise specifically directed to computer technology, is not patentable. For example, in Research Affiliates it was held that attention must be paid to the substance of the invention, such as where the method claimed is a scheme which is merely implemented in a computer. In that instance, there is no ‘improvement in what might broadly be called “computer technology”’.
His honour accepted the following propositions that have emerged from RPL, Research Affiliates, and others:
- The Court must decide, as a matter of substance, not form, whether the claimed invention is proper subject matter for a patent.
- The assessment is not done mechanically, pursuant to precise guidelines. The work and output of human ingenuity must be understood.
- A technological innovation is patentable and a business innovation is not patentable.
- The invention must lie in the computerisation when the claimed invention is to a computerised business method. This requires some ingenuity in the way the computer is used. Implementing a business method using a computer for its well-known and understood functions is not a patentable invention.
- It must be ascertained whether an invention is, in substance, a scheme, or is an improvement in computer technology. It may be useful to consider:
- whether the contribution made by the invention to the field is technical in nature;
- whether the invention solves a technical problem;
- whether the invention results in an improvement in the functioning of the computer, regardless of the data being processed;
- whether the invention requires generic computer implementation, as distinct from steps ‘foreign‘ to the normal use of computers; and
- whether the computer is merely an intermediary, configured to carry out the method using program code for performing the method, but adding nothing to the substance of the idea.
The parties had requested to be heard following delivery of judgement in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (2019) 145 IPR 1 (See our post dated 1 October 2019). His honour made reference to a passage set out by the Full Court, in referring to Research Affiliates:
“In each case, the Full Court was explaining that a claimed method that is unpatentable does not change its legal character merely because the method is implemented by the instrumentality of a computer.”
Repipe attempted to distinguish the patents from those of RPL and Research Affiliates. However, his honour pointed out that:
“No specific application software has been claimed or even identified in any claim of the Patents. No computing programming logic or code is disclosed anywhere in the Patents. The substance of both inventions is a mere scheme that can be implemented using some unidentified software application to cause a server computer and smartphone to perform the steps identified in the claim. To implement the scheme, a reader must use his/her own skill and knowledge to write an appropriate software application. No such application is disclosed in the Patents.”
“As a matter of substance, there is no meaningful technical content in the description in the body of the claims or specification. There is only a scheme. The fact that the scheme may be quicker using a computer than using a paper system is a function of computers not the Patents…”
Following the Full Court’s analysis in Encompass, his honour set out that the substance of the invention claimed in each of the patents was an “unpatentable business method in that:
- A scheme or method is claimed for sharing and completing WHS documents.
- The scheme or method is implemented by using computers which perform their ordinary functions.
- There is no invention as to the way that the computers carry out the scheme or method.”
His honour commented on Repipe’s contention that specific software needs to be designed to achieve the “invention”. He pointed out that no such software is defined by the claims or made the subject of the claims or disclosed anywhere in the complete specifications. Notably, the specifications admit that the claimed inventions may be implemented using any software application. Furthermore, the software referred to by Repipe’s expert witness is something that must be developed and written by a programmer to implement the claimed inventions.
We are again reminded that a patent cannot stand if it is devoid of technical disclosure. It remains important for practitioners to extract as much technical material as possible from inventors. In this case, had the specification contained material of a technical nature, such as unique algorithms that could form the basis of specialised software, then the outcome may very well have been different