The Dust Settles Further In Relation to Patents for Computer Implemented Inventions in Australia

Last month we wrote about the Full Federal Court’s decision in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (Aristocrat), which concerned the patentability of computer implemented inventions (CIIs).

This month, the Full Court determined another appeal regarding CIIs: Repipe v Commissioner of Patents [2021] FCAFC 223. The decision concerned two patent applications by Repipe Pty Ltd that disclosed systems and methods for providing information to field workers by way of a central computer server connected to a GPS-enabled mobile device (i.e. a smartphone). The applications were treated as the same for all relevant purposes at trial and during the appeal.

At first instance, McKerracher J had found that the patent applications were not eligible for patent protection on the basis that the invention the subject of the applications was

‘a mere scheme that can be implemented using some unidentified software application to cause a server computer and smartphone to perform the steps identified in the claim’ [93].

Repipe applied for leave to appeal this decision. Its central submission was that the functionality of the invention lay in the configuration of the mobile devices and the server, drawing parallels to the electronic gaming machine found by Burley J to be patentable at first instance in Aristocrat.

On appeal, the Full Court found that the decision of McKerracher J was correct and did not warrant the grant of leave to appeal, refusing Repipe’s application for leave. In a concise leading judgment, Perram J (with whom Nicholas J and Burley J agreed) accepted the possibility that a particular use of a mobile device with a server might constitute an advance in computer technology, but found that the present invention did not ‘come close’ to satisfying that requirement. His Honour agreed with the trial judge that the purpose of the claimed invention was to solve a problem in the field of business operations, rather than a problem in the field of computer technology.

Perram J noted that the Full Court had overturned Burley J’s decision in Aristocrat, but found at any rate that Aristocrat should be distinguished. His Honour found that there was ‘no analogy’ between the electronic gaming patent subject of the Aristocrat decision and Repipe’s patent applications for a mobile device and server. This distinction spared Burley J (who sat on the Full Court in Repipe) the difficulty of having to reconcile his first instance decision in Aristocrat with the present case.

In a sombre reminder for inventors of CIIs, Perram J observed that, leaving aside the ‘anomalous position’ of electronic gaming machines, the Full Court had only upheld the patentability of CIIs only twice: in International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR 218 and CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 396. His Honour noted (at [9]) that

“[i]n both cases, the inventions could broadly be characterised as an improvement in computer technology. That is not so in this case”.

While this case provides additional guidance for those seeking to protect computer implemented inventions, it nevertheless validates our previous observations that the patent eligibility bar is likely higher in Australia for computer technology than for other technologies. In light of the Full Court’s dismissal of the application for leave to appeal (and pending any application for leave to the High Court), the two-step test adopted by the majority in Aristocrat will remain the applicable test for the patentability of CIIs under Australian patent law.

Further consideration of the eligibility of a ‘configurable symbol’ from the patent at issue in the Aristocrat decision following the remission of that matter to the primary judge may provide even more clarity.

By Harrison Ottaway, Chris Vindurampulle and Patrick Sands

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