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Thursday, September 5, 2013

Evidence-gathering method found to be patentable subject matter

By Senior Associate Anthony Selleck

Another chapter in the ongoing saga of software and business method patents was written last week, with the Australian Federal Court (Justice Middleton)  giving judgment in the case RPL Central Pty Ltd v Commissioner of Patents. The court, in overruling a decision of the Commissioner of Patents, found that a method for assisting individuals to obtain official accreditation of existing skills, experience, knowledge and educational qualifications was patentable subject matter under the Australian Patents Act 1990.  The decision is the opposite result to that found in two other recent cases involving the patentability of software and business methods that we have been following at Scintilla (see our earlier posts on the decisions in Research Affiliates and Alice Corporation). 

Evidence-gathering method

The invention at issue in RPL Central was an Internet-based system that assisted individuals to achieve formal recognition of their existing competencies. The patent specification explained that individuals can request an educational institution (such as a TAFE college) to accredit the individual's existing competencies, and award a qualification equivalent to actually undertaking a training course at the institution, or a part of that course. The accreditation assessment was conducted by reference to certain 'units of competency' that were registered with a government agency and available for download from the agency's web site. Individuals were required to gather evidence of their relevant work and educational histories, to be presented to the accrediting institution and compared against the standards specified in the units of competency.

According to the specification, a problem with the existing system was that the manner of accessing and identifying information relevant to the units of competency was not particularly user friendly, and there was no single point of access. This made it difficult for individuals to gather the right sort of evidence to demonstrate compliance with the specified standards. The solution proposed in the specification (for example, the flow chart below) and defined in the claims, involved the conversion of the elements of competency into a set of questions that would be presented to the individual by way of a form on a website. The individual would then enter answers to the questions into the form, and upload one or more relevant supporting documents. These answers and documents would together constitute the evidence of competency compliance that could be submitted to the institution for assessment. The claimed invention thus allowed an individual to be led through the accreditation and evidence-gathering process.

RPL Central's innovation patent was successfully opposed by a third party, with a Delegate of the Commissioner of Patents finding that the claimed invention was not patentable subject matter. RPL Central appealed the Delegate's decision to the Federal Court.

Manner of manufacture

The issue of whether an alleged invention constitutes patentable subject matter (ie provides the 'manner of manufacture' required under Australian patent law) is addressed by reference to the principles that have developed in the application of the original 1623 Statute of Monopolies. The Australian case law provides a very broad and flexible approach to questions of patentable subject matter allowing the patent system to adapt to new technologies and inventions. This is particularly so since the 1959 decision of the High Court in NRDC v Commissioner of Patents. Pursuant to this flexible approach, Australian courts have previously found computer-implemented methods, including methods involving the processing and storage of business data, to constitute patentable subject matter. 

However, despite the broad approach, courts have long recognised that some subject matter is not capable of supporting an application for grant of a patent. Relevant to the alleged invention in RPL Central is the principle that a patent cannot be granted for a 'mere scheme or plan', that does not result in the creation of a physical phenomenon in which the effect of the invention can be observed. In other words, some inventions are simply too abstract to be patentable.

The judge in RPL Central had to decide what side of the dividing line did the evidence-gathering method fall. Was it a 'mere scheme' with no physical consequence, or was it a computer-implemented process?

Unlike the recent decision in Research Affiliates, the court in this case came down on the side of the computer-implemented process. In this regard, the court accepted RPL's submission that each step of the method involved a 'physical effect', due to the fact that the method operated over interconnected computers that exchanged information with each other. This transfer of information resulted in a physical manipulation of the data stored on the computers, and as such resulted in a physical effect. In addition, the court found that the automatic generation of questions, and the presentation of those questions to the user, created an artificial state of affairs in the user's computer that was itself a physical phenomenon in which the effect of the invention could be observed.

The court took the time to consider and distinguish its decision in Research Affiliates, on the basis that RPL's patent specification provided significant information about how the invention was to be implemented by means of a computer.

What's next for software patents?

Despite the decision in RPL Central, we at Scintilla believe that the Australian Patent Office will continue to take a firm approach on software patents. With this in mind, it is critical that patent specifications for software-related inventions are carefully drafted to include detailed technical disclosure of the processing steps that are defined in the claims. Merely mentioning the use of a computer in the claims is unlikely to be enough to convince a decision-maker that the invention is a patentable computer-implemented process. Further, including as much technical information in the patent specification about precisely how the process or system may be implemented, including possible alternatives to each feature and step described, can help patent applications get over the line, particularly when business method and software inventions are involved.

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