Recent Federal Court Decision Re-Affirms Approach to Assessing Patentability Of Computer Implemented Technology – By Lars Koch
The Full Bench of the Federal Court of Australia in Encompass Corporation Pty Ltd v Info Track Pty Ltd [2019] FCAFC dismissed an appeal against an earlier decision rejecting the patentability of a method and apparatus for displaying information relating to business entities.
In doing so, the Full Bench confirmed that primary judge’s approach in considering the earlier decisions Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (‘RA’) and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 117 (‘RPL’) in assessing the patentability of business methods was correct.
The Full Bench declined the opportunity to contemplate any new tests or requirements for a business scheme or plan executed on a computer to be deemed patentable subject matter[i].
In short, it remains the case in Australia that it is not a patentable invention to simply put a business method “into” a computer to implement the method. Rather, the invention must lie in that computerization.
Background of the Invention
The field of the contested patent relates to computer implemented technology, in particular, a method and apparatus for displaying information relating to business entities. A business “entity” relates to individuals, corporations, businesses, trusts, or any other party involved in a business or other commercial environment.
The specification contends because there are many electronic data repositories containing such entities in different formats it is difficult to identify and access information relating to specific entities across multiple disparate data sources. The invention seeks to solve this problem.
The Alleged Invention
The claims are directed to a method in an electronic processing device, and an apparatus having an electronic processing device to perform the following steps of the claimed invention as summarized below:
- generating a network representation by querying remote data sources;
- causing the network representation to be displayed to a user;
- in response to user input commands, determining at least one user−selected node corresponding to a user−selected entity;
- determining at least one search to be performed in respect of the corresponding entity associated with the (at least one) selected node;
- performing at least one search to determine additional information regarding the entity from at least one of a number of remote data sources by generating a search query; and causing any additional information to be presented to the user.
Regarding the claims, the judges note that “…It will be apparent that claim 1 does not characterise the electronic processing device which performs the method. As we have said, the specification makes it clear that “any suitable processing system” may be used.”
Regarding the description it was found that “the various suggested ways in which the method can be implemented, as described in the specification, are not essential integers of the claimed invention.” Their honors also note that the “description is largely agnostic as to how the method should be implemented” and raise the imprecise language of the description as a factor being considered, e.g., “in any appropriate manner”, “”can be achieved in any one of a number of manners”, and “may be selected in any appropriate manner”[ii].
Initially, the primary Judge found that the claims were not patentable reasoning that “satisfaction…for a “vendible product”…is not enough to afford patentability, per RA. A clear distinction was drawn between, the implementation of an abstract idea in a computer, and the implementation of an idea in a computer that creates an improvement in the computer.
The Appellants argued that:
- RA and RPL had inconsistencies with previous precedential case law; and
- Because of this, the primary judge had erred in application of the principles set forth in RA and RPL.
A further argument put forward was that the claimed method cannot be implemented using “generic software”.
The Respondent argued that, properly characterised, the claimed method is no more than an instruction to apply an abstract idea using generic computer technology.
The Commissioner of Patents (“the Commissioner”) intervened and submitted that, in determining whether an invention is a manner of manufacture, attention must be directed to its substance, not its form. And, further, a key consideration is whether the alleged ingenuity resides in the way in which the method is implemented in the computer (in which case, the alleged invention may be patentable) or whether the ingenuity lies only in an unpatentable method or scheme (in which case, the alleged invention will not be patentable)[iii]. (Emphasis added).
The Institute of Patent and Trademark Attorneys (IPTA) also intervened and submitted that, regarding the Commissioner’s statement on determining alleged ingenuity, it is incorrect to conflate the grounds of Novelty and Inventive Step with that of Manner of Manufacture[iv].
Findings
The Full Bench notes that the correctness of Research Affiliates and RPL Central was never “seriously in doubt” and further that this appeal “does not provide the occasion for this Court to set out the metes and bounds of patentable computer−implemented inventions”. In short, the Full Bench baulked at the opportunity to contemplate any new tests or requirements for a business scheme or plan executed on a computer to be deemed patentable.
Rather, the Full Bench only considered whether the primary judge correctly applied the principles of RA and RPL to the case at hand. The Full Bench concluded that the primary judge did not err, and consistent with the findings in RA and RPL, “the method claims in suit are, in truth, no more than an instruction to apply an abstract idea (the steps of the method) using generic computer technology.”[v]
The suggestion that it was more than “generic software” was quickly dismissed by the Full Bench: “The difficulty with this submission is that the claims in suit do not secure as an essential feature of the invention, any particular software or programming that would carry out the method. It is left entirely to those wishing to use the method to devise, and then implement, a suitable computer program for that purpose.”[vi]
Summary and Recommendations
This recent decision follows the same trend as Research Affiliates and RPL Central.
Hence, with respect to a computer implemented business scheme or plan, per RPL it remains the case in Australia that:
“There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerized business method, the invention must lie in that computerization. It is not a patentable invention simply to “put” a business method “into” a computer to implement a business method using the computer for its well-known and understood functions.”[vii]
As such, it may be beneficial:
- To identify within the description any specific improvement in the operation of the computer in executing the business method.
- To identify within the description any specific programming steps required by an invention and make sure they are claimed appropriately, especially with regards to the crux of how the invention should be implemented.
- To remove or minimize any recitation related general purpose computing, e.g. “any appropriate form”, “in any appropriate manner”, “may be achieved in any one of a number of manners”, and etc.
We note the Full Bench only made an oblique reference to the primary judge’s perceived incorrect conflation of novelty and inventive step with manner of manufacture, viz:
“…reference at [193] to whether the claimed method results in ‘an improvement in the computer’ is to be understood as an inquiry into and search for possibly patentable subject matter by reference to a touchstone of such subject matter. So too the primary judge’s inquiry at [195] as to whether the claimed method results in an improvement in ‘the functionality of the machine’”.[viii].
Consequently, we do not believe that the Commissioner’s current approach of relying on cited prior art documents and discounting anything disclosed therein (or otherwise asserted to be “well known”, or part of the “common general knowledge in the technical field of the invention”) from part of “the contribution to the ingenuity of the alleged invention” will change at this time.
Of course, should you have any further questions relating to this case, please do not hesitate to contact me or my colleagues in the ICT Team at Pizzeys.
[i] par. [07]
[ii] par. [22]
[iii] par. [70]
[iv] par. [72]
[v] par. [99]
[vi] par. [100]
[vii] par. [95], citing RPL at [96]
[viii] pars. [109]-[112]