Practical guidance on Australian software patentability – 16 September 2013
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The patentability of computer-implemented inventions under Australian law has been clarified by two recent Federal Court decisions, providing comparable examples of what is and is not patentable.
These decisions highlight that the prospects of obtaining valid Australian patent protection for a computer-implemented method may be improved by:
- a patent specification
- asserting a patentable invention in, and describing the benefits of, the use of a computer, and
- containing substantive details as to how the claimed invention is to be implemented by a computer; and
- claiming the invention such that:
- “the computer is integral to the invention as claimed”, and
- “the involvement of the computer in the invention is described in [the] claims in such a manner that it is inextricably linked with the invention itself”.
Australian patentability – background
To qualify for an Australian standard patent, an alleged invention must be a “manner of manufacture” and novel, and have an inventive step (i.e. be non-obvious). To qualify for an Australian innovation patent, an alleged invention must be a “manner of manufacture” and novel, and have an innovative step.
Manner of manufacture, novelty, inventive step and innovative step are distinct requirements. This article focuses on the “manner of manufacture” requirement.
The Australian “manner of manufacture” requirement takes the place of the “statutory subject matter” requirement in other jurisdictions. It is a concept rooted in the Statute of Monopolies 1623 which, over the intervening 390 years of case law, has taken on meaning well beyond a “verbal interpretation” of the words. Authority provides:
- “[I]nsofar as ‘manufacture’ suggests a ‘vendible product’, this is to be understood as covering every end produced or artificially created state of affairs which is of utility in practical affairs and whose significance thus is economic”.
- If the claimed invention is a mere scheme, an abstract idea or mere information, it will not be patentable as there is no physical consequence.
- “A physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required”.
- A “change in state or information in a part of a machine” may be a sufficient physical effect.
- The limits of Australian patentable subject matter are evolving and not limited to an exact verbal formula.
Research Affiliates – not patentable
Research Affiliates LLC v Commissioner of Patents  FCA 71 concerned the patentability of a computer-implemented method related to the share market. A patent application and its divisional child were in suit although the analysis was “conducted on the basis that it is necessary for the Court to consider only claim 1 of the Divisional Application…”. That claim reads:
A computer-implemented method for generating an index, the method including steps of:
(a) accessing data relating to a plurality of assets;
(b) processing the data thereby to identify a selection of the assets for inclusion in the index based on an objective measure of scale other than share price, market capitalization and any combination thereof;
(c) accessing a weighting function configured to weight the selected assets;
(d) applying the weighting function, thereby to assign to each of the selected assets a respective weighting, wherein the weighting:
(i) is based on an objective measure of scale other than share price, market capitalization and any combination thereof; and
(ii) is not based on market capitalization weighting, equal weighting, share price weighting and any combination thereof, thereby to generate the index.
The invention so defined was held to be non-patentable on the basis that the only physical effect is a computer file containing the index and that index is simply information. Research Affiliates accepted that the computer file was the only physical result, which likely operated to their detriment.
The “proposition that information of economic significance, once entered into or produced by means of a computer, becomes an economically valuable artificially created state of affairs, and thus patentable” was explicitly rejected. The decision suggests that the “writing of information into [a] computer’s memory” associated with the “mere use” of the computer and which “does not involve a specific effect being generated by the computer” is not a sufficient physical effect.
Research Affiliates has appealed this decision.
RPL – patentable
The invention of RPL Central Pty Ltd v Commissioner of Patents  FCA 871 relates to generating questions based on information retrieved via the internet. The questions may be presented in the manner of a Wizard.
Two independent claims were considered. For present purposes it is sufficient to deal only with claim 1.
“Claim 1 relates to a method of gathering evidence for the purpose of assessing an individual’s competency relative to a recognised qualification standard, which includes the following steps:
(a) 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;
(b) 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;
(c) an assessment server presenting the automatically-generated questions via the internet to a computer of an individual requiring assessment; and
(d) receiving from the individual via their computer a series of responses to the automatically-generated questions, the responses including evidence of the individual’s skills, knowledge and 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 on their computer which are transferred to the assessment server”.
The invention so defined was held to be a manner of manufacture. The decision includes:
“…there are accordingly a number of physical effects which occur in implementing the invention defined by the claims. I further find that each of the computer-effected steps of the invention constitutes or gives rise to a change in state or information in a part of a machine, and therefore produces a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation [citation omitted]. For example, whether a wizard is involved or not, the generation of questions for and presentation of questions to the user creates an artificial state of affairs in their computer (in that there is a retrieval and transformation of data into questions, and a corresponding change in state or information a part of a machine)”(our emphasis).
In rebuttal to submissions reflecting recent Patent Office practice requiring that the physical effect be substantial and central to the invention, the decision further includes:
“…I do not accept that the Australian decisions that are binding upon me in respect of this issue – NRDC, CCOM and Grant – expressly import any such requirement of substantiality or centrality of physical effect”
although arguably these latter comments are obiter (non-binding) in view of the conclusion:
“The computer is a substantial, central or integral part of each claim”.
In our view, these two decisions are not readily reconcilable. It seems inconsistent that RPL’s method is said to have a number of (apparently sufficient) physical effects, whereas Research Affiliates’ method apparently has only one physical effect and that physical effect is considered insufficient. Are not RPL’s questions “simply information” as much as Research Affiliate’s index? There also appears to be inconsistency between the approach to the “mere use” of a computer and the (potentially obiter) rejection of the requirement that the physical effect be central.
Hopefully Research Affiliates’ appeal will provide further guidance in the coming months.
In the meantime, despite apparent inconsistency, these decisions provide useful guidance for patent attorneys with an interest in computer-implemented inventions in Australia.
Focus on computerisationwhen framing the problem and describing the solution
RPL’s patentable invention is described in the patent specification with reference to the difficulties of accessing and retrieving vast amounts of information and how this problem is overcome by computerisation, whereas Research Affiliate’s “specification asserts a patentable invention, not in the use of the computer, but in the particular series of steps that give rise to the generation of the index”.
Detail the operation of the computer in the patent specification
RPL’s patentable invention is described with reference to the flow of information between various hardware components. The specification includes diagrams illustrating the hardware components (and the information flows therebetween) and flow charts setting out the computational steps with reference to those hardware items. In contrast, Research Affiliate’s specifications provide “no substantive detail regarding the implementation of the claimed method”.
In the claims emphasise the role of the computer
In the definition of RPL’s patentable invention, the computer’s involvement is mentioned in the recitation of each step. In contrast, Research Affiliate’s claim reads on a hand calculation but for the words “computer-implemented” in the preamble of the claim. For example, RPL’s invention includes the step of “a computer retrieving via the internet from a remotely-located server…” whereas Research Affiliate’s invention includes the step of “accessing data…”.
This difference (beyond the “via the internet” limitation) seems to have contributed to the conclusions (operating in RPL’s favour) that :
- “the computer is integral to [RPL’s] invention as claimed”; and
- “the involvement of the computer in [RPL’s] invention is described in [the] claims in such a manner that it is inextricably linked with the invention itself”.
 Research Affiliates at 72
 Research Affiliates at 68; and RPL Central at 171
 RPL Central at 172
 RPL Central at 139
 Grant v Commissioner of Patents  FCAFC 120, at 70-71
 Grant at 32
 Grant at 32
 Research Affiliates at 7
 Research Affiliates at 27
 Research Affiliates at 66 and 67
 Research Affiliates at 71
 Research Affiliates at 70
 RPL Central at 46
 RPL Central at 143
 RPL Central at 147
 RPL Central at 156
 Research Affiliates at 72
 Research Affiliates at 68
 RPL Central at 172
 RPL Central at 139