Software patents in Australia: where to from here?

In May 2016, The High Court of Australia dismissed an application for special leave to appeal the RPL Central decision1 of the Full Court of the Federal Court of Australia. The Full Federal Court found that RPL Central’s invention was not patentable as it was simply a scheme or idea implemented on a generic computer, using standard software and hardware.

 In the briefest of decisions, 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’.

Background to the decision

As we reported in the last edition of Inspire!, RPL Central’s invention was a method of gathering evidence for the purpose of assessing an individual’s competency relative to a recognised qualification standard. The claims extensively defined the use of a computer, the internet and a remote server in the performance of the method steps. The specification provided significant detail about how these technical elements operated and interacted to implement the invention.

In the first instance of the decision, Middleton J found that RPL Central’s invention was patentable. Middleton J noted that the specification and claims in issue provided significant information about how the invention was to be implemented by means of computer, and that a computer was integral to the invention as claimed.

However, the Full Court found that the method did not include any steps that were outside the normal use of a computer, other than requiring the computer to process the criteria to generate corresponding questions and present those questions to the user. Since the creation of the plurality of assessable criteria themselves were publicly known, and neither the  presentation of the questions nor the processing of the user’s responses involved ingenuity themselves, the Full Court found that the claimed invention was an unpatentable scheme or a business method.

Where does this leave us?

The Full Court found that determining patentable subject matter is not a question of stating precise guidelines, but rather of deciding in each case whether the claimed invention, as a matter of substance not form, is properly the subject of a patent.

However, the Full Court reiterated some of the considerations discussed in Research Affiliates for assessing patentable subject matter:

  • 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.

Moving closer to Europe

The Full Court looked to the UK Aerotel decision in determining that a claimed invention must make a ‘technical contribution’. Recently received Examination Reports appear to indicate that the Australian Patent Office is applying a European style ‘technical contribution’ approach to patentability, albeit in a less structured manner than is the case before the UK Patent Office or the EPO.

The signposts

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

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

Patent specifications also need to be drafted so that they include material than can be relied upon to advance these arguments during examination.

The signposts include:

  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.

If you have any questions about how this decision may effect current or future applications, please contact Ross McFarlane –

BEng(Elec)(Hons) FIPTA

Ross began his professional career as a Technical Assistant with Phillips Ormonde Fitzpatrick (POF) in 1987. In 1991, he moved to Europe where he worked with The Swatch Group in Switzerland as an in-house patent attorney. After returning to Australia in the late 90s, Ross worked as a patent and trademarks attorney before re-joining POF as a Principal in 2006.