Australian High Court refuses to hear software patent appeal

Hardline position on patentable subject matter is maintained

The High Court of Australia has dismissed an application for special leave to appeal from the RPL Central decision[1] of the Full Court of the Federal Court of Australia.

The Full Federal Court found that RPL Central’s invention was a simply scheme or idea implemented on a generic computer, using standard software and hardware, and was therefore unpatentable.

In the briefest of decisions[2], the High Court found that the Full Federal Court’s decision was “plainly correct” and that none of RPL Central’s grounds of appeal enjoyed “sufficient prospects of success to warrant the grant of special leave to appeal”.

As a consequence:

  • Where the claimed invention is to a computerised business method, the invention must lie in that computerisation and not in the business method.
  • An invention does not become patentable merely by the extensive use of technical elements in the claims, or by a detailed disclosure of how those technical elements perform the invention in the specification.
  • An invention must provide a “technical contribution” as is the case in the UK.
  • A computer acting merely as an “intermediary”, namely configured to carry out the method but adding nothing to the substance of the idea, is not a patentable invention.
  • Artificial intelligence software may be patentable

12 signposts relevant to whether a computer-implemented invention is patentable subject matter have been developed in part from the RPL Central decision, and are included in the Australian Patent Office’s Patent Manual of Practice and Procedure[3] . These signposts are:

  1. whether the contribution of the claimed invention is technical in nature;
  2. whether the invention solves a technical problem;
  3. whether the invention results in an improvement in the functioning of the computer, irrespective of the data being processed;
  4. whether the claimed method merely requires generic computer implementation;
  5. whether the computer is merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
  6. whether the ingenuity in the invention is in a physical phenomenon in which an artificial effect can be observed rather than in the scheme itself;
  7. whether the alleged invention lies in the way the method or scheme is carried out in a computer;
  8. whether the alleged invention lies in more than the generation, presentation or arrangement of intellectual information;
  9. putting a business method or scheme into a computer is not patentable unless there is an invention in the way the computer carries out the scheme or method;
  10. it is not determinative that the claimed method can only be implemented in a computing environment;
  11. the limitation of the claims to other technological environments may not alter the fact that what is claimed is a scheme or abstract idea; or
  12. if the invention in substance lies in the application of computer technology, or in an improvement in computer technology, it will generally be considered patent eligible.

It is becoming increasingly important for patent applicants to develop arguments based on one or more of these 12 signposts during examination before the Australian Patent Office of patent applications for computer-implemented inventions.

[1] Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177

[2] RPL Central Ltd v Commissioner of Patents [2016] HCASL 84