The Federal Court decision in RPL Central Pty Ltd (“RPL”) v Commissioner of Patents (“the Commissioner”)  FCA 871 has held that a computer implemented invention can be patentable subject matter in Australia, particularly where there is substantial disclosure in the patent specification of how the invention is to be implemented on the computer.
The Court confirmed that, when determining manner of manufacture, the claimed invention must exhibit a physical effect and rejected the Commissioner’s argument that the physical effect must be “substantial” or “central” to the claimed invention (physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation as required by the decision in Grant v Commissioner of Patents  FCAFC 120. The Court also rejected the Commissioner’s notion that if an invention could be performed without the use of a computer, and if one were to strip away the computer aspects of the claims, one would be left only with a non-patentable method for performing an aspect of a business.
This Federal Court decision is the result of an appeal from a decision by the Commissioner of Patents, stemming from an opposition proceeding against innovation Patent 2009100601, that the claims of this patent do not constitute a manner of manufacture under s 18(1A)(a) of the Patents Act 1990 (Cth) (‘the Act’).
Interestingly, this was not a ground raised during examination of the innovation patent, nor raised by the opponent, but rather raised and pressed by the Commissioner of her own volition.
As a result, this Federal Court decision focuses solely on manner of manufacture. Although the patent is an Australian innovation patent, the test for manner of manufacture is the same as that for a standard patent.
The Claimed Invention
The claimed invention is directed to a system and method for gathering evidence for an assessment of an individual’s competency relative to recognised standards (i.e. “Recognition of Prior Learning (RPL)”). The invention automatically generates a series of questions to be presented to the individual on their computer and receives the corresponding responses from the individual via their computer interface. The received responses may be text based responses to the questions or may take the form of uploaded supporting documentation (including documents, audio or video). A copy of the specification may be found here.
The specification includes eleven pages of description of the invention and five claims (noting that the application in an innovation patent which is limited to five claims) and six drawings. The drawings illustrate a computer system showing the operation of the overall system together with a number of pseudo code/method flow charts explaining the operation of the invention and the steps carried out by the computer system. Also, examples of the questions that may be generated and posed to the user are also provided.
Claim 1 (reproduced below) is an independent method claim, while the other independent claim (claim 5) is a system claim which largely corresponds to claim 1.
1. 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; and receiving from the individual via said individual’s computer a series of responses to the automatically-generated questions, the response 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 filed stored on the individual’s computer, which are transferred to the assessment server.
Manner of Manufacture
Paragraphs 53 to 110 of the judgment includes a comprehensive summary of the development of the law in Australia on the question of manner of manufacture with regard to software and computers starting from National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 (‘NRDC’) to International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR 218 (‘IBM (1991) 33 FCR 218’), CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (‘CCOM’), Welcome Real-Time SA v Catuity Inc (2001) 113 FCR 110 (‘Catuity’) and finally Grant v Commissioner of Patents (2006) 154 FCR 62 (‘Grant’).
Submissions by RPL on Manner of Manufacture
RPL argued that the approach taken by the Commissioner with regard to manner of manufacture was incorrect in that they went further than that required by NRDC or the decision in Grant by imposing a further test that the “concrete effect of phenomenon or manifestation of transformation” which was referred to in Grant is “significant both in that it is concrete and also that it is central to the purpose or operation of the claimed process or otherwise arises from the combination of the steps of the method in a substantial way”. [Our Emphasis]
RPL also submitted that it is unclear how to undertake such an assessment required by this test. Further, even if a test were allowable, lack of manner of manufacture must be shown on the face of the specification and, in any event, that the invention did demonstrate a physical effect that is a concrete effect central to the invention claimed.
RPL also submitted that it was wrong for the Commissioner to cherry pick and “separate out features of the claim and give some more weight and meaning than other features”. That is to say that the combination of features is claimed and is part of the invention as a whole rather than according to its individual parts.
Submissions by the Commissioner of Patents of Manner of Manufacture
The Commissioner submitted that the principles of NRDC caused difficulties where two categories of subject matter intersect – namely business methods and computer related inventions – and that in their view RPL’s invention was involved in such an intersection.
The Commissioner submitted that the law is not certain as to whether “a physically observable effect” is required for a patent application for a method and device rather than for simply a method alone. The Commissioner also submitted that more than a mere change in state or information in part of a machine must be required to establish the requisite for the physical effect since any normal operation of a computer results in a change in state of information in part of a machine.
The Commissioner also submitted that the law is not settled as to whether, if a physical effect is required, there is a materiality or substantiality requirement. The Commissioner submitted that such a requirement would not merely be satisfied by the operation of one or more steps of a method on a computer.
The Court applied the key criteria relating to manner of manufacture articulated by the High Court in NRDC and elaborated upon by CCOM and Grant, as explained below.
“I do not consider it relevant that the invention in question does not involve steps which are “foreign to the normal use of computers”, as asserted by the Commissioner. Such a requirement is not imposed by any of the binding authorities that were the subject of argument in this case, and I consider that to impose such a requirement strays dangerously close to the error identified in the primary judge’s reasoning by the Full Court in CCOM”. [i.e. incorrectly being influenced in determining manner of manufacture by asking whether what was claimed involved anything new and unconventional in computer use].