Australian Full Court uses lack of technical contribution to reject RPL Central’s software patent
The Australian Full Federal Court has overturned1 the primary judge’s initial decision2 and concluded that RPL Central’s invention is a scheme or business method that is not patent eligible subject mater. In doing so, it considered UK and US law in determining whether the invention’s contribution was technical in nature. The Court felt technical innovations were acceptable, but not business innovations.
RPL Central’s invention
The main method claim is:
“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; andreceiving 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 individual’s computer, which are transferred to the assessment server.”
The Court characterised this as involving3:
- using a computer to retrieve the criteria using the Internet. This involves the user using conventional web-browser software;
- the computer processes the criteria to generate corresponding questions relating to the competency of the individual to satisfy the elements of competency and performance criteria associated with the recognised qualification standard;
- those questions are presented;
- the individual answers the questions and, if he or she chooses to do so, uploads documentation from his or her computer.
A corresponding system claim was also broadly characterised.
Patentability of RPL Central’s invention
The Court made it clear that the claimed invention needed to be examined to determine whether it is in substance a scheme or plan, or whether it can be broadly be described as an improvement in computer technology. There must be more than an abstract idea, and the computer must be integral to the invention, rather than a mere tool on which the invention is performed. For computerised business methods, the invention must lie in that computerisation. It is not sufficient to simply implement the business method using the computer for its well known and understood functions4.
Whilst the Court confirmed that it is not a question of satisfying precise guidelines5, it did confirm6 that:
- It is necessary to ascertain whether the contribution to the claimed invention is technical in nature, and referred to the UK decision in Aerotel7.
- One consideration is whether the invention solves a technical problem, irrespective of the data being processed.
- Another consideration is whether the claimed method merely requires generic computer implementation.
- Another consideration is whether the computer is merely the intermediary, and adds nothing to the substance of the idea (referring to the US Supreme Court’s decision in Alice8).
The Court drew a distinction between a technological innovation which is patentable and a business innovation which is not9. In referring to the Court’s earlier decisions in IBM10 and CCOM11, where the inventions were considered to be patentable, the Court characterised IBM as involving drawing a curve on a computer, and CCOM as converting a word into Chinese characters. It stated that care must be taken to consider the circumstances of the claimed invention, beyond the form of words used12.
Characterising inventions using the approach adopted by the Court will inevitably lead to arguments as to whether, despite the wording in the claims, the invention has been correctly characterised, particularly in relation to its contribution.
RPL Central characterised their invention as involving the conversion of personalised information to questions, including asking for relevant attachments. The Commissioner argued that this is simply an easily programmed conversion of information to a question by prepending relevant words. The Court considered that the computer was in effect operating as an intermediary, and that the computer did not evaluate the user’s input to provide the answer. It felt that the programming allowed for a series of prepared words to be prepended to the user information to turn the statement into a question13.
RPL Central was found not to claim any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method. Whilst it was felt that the reframing of criteria into questions may be outside the generic use of a computer, it was considered that “the idea of presenting questions, by reframing the criteria, is that: an idea”. It was not suggested that the implementation of the idea formed part of the invention, and the Court noted that indeed no instructions as to programming are provided in the specification, other than the idea of turning the performance criteria into a question and prepending or otherwise inserting a form of words14. This led to the conclusion that the invention was nothing more than a scheme or a business method15.
Application of Myriad to RPL Central’s invention
The Court referred to the recent High Court decision in Myriad16 and said it had reached its conclusion that the claims are not patentable subject matter by applying the established principles as they relate to computer implemented business methods. In contrast to the situation with Myriad, this is not a case where the subject matter of the claims lies at the boundaries of an existing judicial development of the concept of patentable subject matter17.
Accordingly, this case was not considered to constitute a new class of claim involving or attracting consideration of the factors discussed in Myriad18 which the Court considered to be fortunate, given that the Court did not have any basis for an analysis of this kind19.
Australian software patent law now similar to UK law
The Full Court has made it clear that the law that now applies in relation to software patents in Australia is similar to that which exists in the UK, in particular its requirement for an invention to provide a technical contribution. A mere business or commercial contribution is not sufficient.
- Commissioner of Patents v RPL Central Pty Ltd  FCAFC 177
- RPL Central Pty Ltd v Commissioner of Patents  FCA 871
- Supra n1, Para 37
- Ibid, Para 96
- Ibid, Para 98
- Ibid, Para 99
- Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application  1 All ER 225
- Alice Corporation Pty Ltd v CLS Bank International 134 SCt 2347 (2014)
- Ibid, Para 100
- International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR 218
- CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260
- Ibid, Para 105
- Ibid, Para 109
- Ibid, Para 110
- Ibid, Para 113
- D’Arcy v Myriad Genetics Inc  HCA 35
- Ibid, Para 115
- Ibid, Para 118
- Ibid, Paras 118 and 119
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