23 February 2021 | Jane Owen Partner, Rebecca Currey Associate

There has been a spate of recent Federal Court decisions which provide some clarity about the patentability of computer implemented inventions in Australia: Encompass and Rokt (which we reported on here), Repipe #1, and Aristocrat.  

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 characterised).

To this end, the invention claimed in each of the Patents in Repipe #1 was an unpatentable business method or scheme because (at 97):

(a) a scheme or method is claimed for sharing and completing WHS documents;
(b) the scheme or method is implemented by using computers which perform their ordinary functions;
(c) there is no invention as to the way that the computers carry out the scheme or method.

As such, and unfortunately for Repipe and for other innovators in this space, the growing jurisprudence in this space strongly supports a no patentability in Australia without some innovation in the computer technology implementing the scheme. 

Repipe #2

While his Honour expressed the view in Repipe #1 that the defects could not be cured by amendment, Repipe was granted leave to make an application to amend. 

However, Repipe’s proposed “amendments, amendments to amendments and then amendments to the amendments to the amendments” (the latter which were dismissed on the principle of finality of litigation), in any of their forms were futile. 

The amendments included (amongst other things) the method claimed being directed at configuring a server and portable personable computer device to enable performance of the steps in the method. 

His Honour said that Repipe was attempting to add detail to the claims of the patents in order to create a manner of manufacture which created two possibilities - the detail in the amendments:

(a) if properly drawn from the specifications, cannot transform the substance of the invention into a manner of manufacture because findings have already been made that no patentable subject matter was disclosed; or
(b) is not properly drawn from the specification, and goes beyond what is disclosed in some way. 

Either way, his Honour said that the addition of generic detail to the claims, or elaboration on detail disclosed in the specification cannot elevate a non-existing manner of manufacture to a manner of manufacture. 

It is important to note that in the Repipe patents that there was no disclosure of any technical means that the computers had to use to perform the ordinary identified processes of document or information storage, selecting documents, downloading information etc. 

In these circumstances, his Honour said:

The language used by patent attorneys when drafting and amending claims cannot convert what is, in substance, an unpatentable business method or scheme into a patentable invention by merely asserting that the invention is in the field of computer technology…the issue must be addressed as a matter of substance….

Consistent with this line of jurisprudence, the Patent Office continues to be cautious in the examination of computer-implemented inventions, but we expect that this decision (and the earlier decisions on this point) will have ramifications for patent attorneys and the preparation of such applications (if such applications are in fact pursued at all going forward). 

 

About the Authors

jane owen module

Jane Owen
Partner
I'm a partner and head of our Intellectual Property Group in Sydney where I use my deep-level experience of complex IP strategy and disputes to advise clients from a range of IP-rich industries.

Direct: +61 2 9226 9888

[email protected]
rebecca currey module

Rebecca Currey
Associate
I am a senior associate in our Intellectual Property Group, based in Sydney. I advise clients from a range of sectors as diverse as life sciences, engineering, telecoms, food & beverage, fashion and furniture on all aspects of IP law.

Direct: +61 2 9226 9888

[email protected]

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