Continuing the Commissioner of Patents success in cases regarding computer implemented inventions and patentable subject matter, the Full Federal Court of Australia has dismissed an appeal brought by Repipe seeking to challenge findings that the invention the subject of its two innovation patents was not “patentable subject matter”.
We reported on the earlier Repipe decisions here. In short, the inventions claimed in the two patents 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
While there was no doubt that the claimed invention in this case (which consisted of the use of features of a GPS enabled mobile device to communicate with a central server that handles information in a specific way) was a “useful invention”, and a “clever use of mobile devices and a server” Perram J was unable to see how it constituted an advance in computer technology:
It is clear that the present invention is nothing more than some mobile devices connected to a server configured to behave in a particular way…Whilst I would not rule out the possibility that a particular use of a mobile device with a serve might constitute an actual advance in computer technology (as distinct from a mere use of that technology) this invention does not come close to satisfying that requirement, he said.
His Honour made an interesting observation that, putting aside the anomalous position of electronic gaming machines, that the Court has only upheld the patentability of computer implemented inventions twice (ie. where the inventions were found to be improvements in computer technology):
- a curve drawing algorithm in International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR 218
- the use of an English language keyboard to generate Chinese characters in CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 396; 51 FCR 260.
While Repipe had tried to amend the patent to address the absence of patentable subject matter, his Honour said that this application was “inherently unsound”.
The question of how the invention was to be characterised for purpose of assessing patentability was to be determined as a matter of substance not form… An invention which did not broadly represent an advance in computer technology could not by amendment be transformed into one which did. If the amendments succeeded in doing so what would then be disclosed would be in substance a different invention, he said.
If such patent applications are to be pursed at all going forward, this line of jurisprudence has clear ramifications both for patent attorneys who prepare these applications, and innovators in the computer technology space in needing to ensure that any invention disclosed in an application is an advancement in computer technology, given that any application could not be amended down the track to transform what was originally disclosed into an advancement if it was ultimately not considered one as filed.
For further information, please contact:
Rebecca Currey, Bird & Bird
rebecca.currey@twobirds.com
