The Full Bench of the Federal Court of Australia has handed down its decision in Commissioner of Patents v RPL Central Pty Ltd  FCAFC 177. Unfortunately, the Full Bench has overturned the favourable decision of the primary judge, and considers that the claimed computer-implemented method (which the court characterised as a ‘business method’ or ‘scheme’) is directed to unpatentable subject matter.
The claimed invention relates to a computer-implemented method for assessing an individual’s competency relative to a recognised qualification standard. The court held (at ) that claim 1 of the patent involves:
– using a computer to retrieve the criteria using the Internet. This involves the user using conventional web-browser software;
– the computer processes the criteria to generate corresponding questions relating to the competency of the individual to satisfy the elements of competency and performance criteria associated with the recognised qualification standard;
– those questions are presented;
– the individual answers the questions and, if he or she chooses to do so, uploads documentation from his or her computer.
Following its own earlier reasoning in Research Affiliates LLC v Commissioner of Patents  FCAFC 150, the court found (at ) that the claimed method is, in substance, the implementation by a generic or standard computer of an unpatentable idea or business method:
‘RPL Central does not claim any invention or ingenuity in any program or operation of a computer, or implementation by a computer to operate the method. Accordingly, the ingenuity of the inventors must be in the steps of the method itself. The method does utilise the speed and processing power and ability of a computer but there is no suggestion that this is other than a standard operation of generic computers with generic software to implement a business method. This is the method of taking the information as to available criteria for Units of Competency and reframing those criteria into questions and presenting them to, and receiving the answers from, the user together with any documents that the user wishes to append. The reframing of the criteria into questions may be outside the generic use of a computer but the idea of presenting questions, by reframing the criteria, is that: an idea. It is not suggested that the implementation of this idea formed part of the invention.’
The court did note at  that not all computerised schemes or business methods are unpatentable but 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 computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well-known and understood functions.’
The court further noted at  that the fact that a method cannot be carried out without the use of a computer is insufficient to:
‘…render the claimed invention patentable if it involves simply the speed of processing and the creation of information for which computers are routinely used. In those circumstances, the claimed invention is still to the business method itself.’
This decision will undoubtedly encourage the APO to maintain their restrictive stance against computer-implemented inventions. Though there is a possibility that RPL Central Pty Ltd may apply for Special Leave to appeal the decision, and that the High Court of Australia may overturn the decision, this is still some time away.In the meantime, we suggest the following drafting tips:
Draft the specification to focus on a solution to a technical problem specifically arising in computer technology.
Describe the technical implementation in detail.
Do not state or imply that the solution can be solved in the human mind, or by pen & paper.
Describe how the invention improves the function of the computer itself or effects an improvement in another technology.
Draft the claims to a specific machine or system configured in a specific way, rather than a computer-implemented method.