Patent claims directed at solving the volume of workplace health & safety paperwork are ‘a good idea’ but unpatentable: Federal Court of Australia

However, can a patentee overcome a decision that the invention claimed is not a manner of manufacture (ie. does not contain patentable subject matter) by amendment?  On 29 January 2021, the decision in Repipe #2 was handed down which considers this issue. 

We explore the implications of the Repipe #1 and #2 decisions below. 

Repipe #1

Repipe #1 dismissed an appeal from a decision of a Delegate of the Commissioner of Patents to revoke two innovation patents on the grounds that the inventions claimed were not a ‘manner of manufacture’ within the meaning of section 18(1A)(1) of the Patents Act 1990 (Cth). 

In this regard, a mere scheme or plan is not patentable. However, an improvement in computer technology, such as one that implements a method used in the conduct of business, is patentable. The criterion for patentable subject matter is an artificially created state of affairs that has economic significance or utility.

The inventions claimed in the two patents in Repipe #1 were directed at sharing and completing workplace health and safety documents by field workers using computer technology whereby information (such as hazards) could be shared with field workers in real time, and documents could be created dynamically in the field. 

Repipe stressed that the claimed methods prescribed detailed technological architecture and functional requirements and claimed technology drive solutions.  Claim 1 of the 560 patent claimed (in part):

A method of providing information for risk management to a user of a portable personal computing device performing jobs in the field, said method comprising:

selecting a document to be completed by the user related to a job to be performed by the user;

downloading information to the portable personal computing device;  

displaying the downloaded information for selection of items in the information so as to complete the selected document; wherein the downloaded information comprises information provided by one or more other users having an administrative role and information provided by one or more other users having a field worker role… 

receiving input to the portable personal computing device…

uploading the input…

However, his Honour found that the inventions claimed were: 

“mere scheme[s] that can be implemented using some unidentified software application to cause a server computer and smartphone to perform the steps identified in the claim.”

His Honour said:

In my view, the question is whether or not the method merely requires generic computer implementation of a scheme or abstract idea. In Encompass, the claimed method was no more than an idea for a computer program to be implemented in an electronic processing device (with the manner of implementation not…