Test for Patentability of Software in Australia

The Court noted that the appellants endeavoured to explain why the claimed method falls within the notion of an “artificially created state of affairs” by attributing computer functionality to the method: i.e. the computer (or, in the language of the claims, the electronic processing device) searches remote data sources; generates a network representation; and responds to a user’s selection to conduct a further search. The Court also observed that the appellants attributed computer functionality to the method by virtue of the computer also determining additional information relating to the same entity, though there was contention over whether this “entity matching” was even a step in the method claimed. In the result, however, at paragraph [99] the Court held: Turning to the present case, we accept the respondent’s submission that 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. … … But even if for present purposes “entity matching” is taken to be a step in the claimed method, neither it nor the other steps, individually or collectively, amount to anything more than a method in which an uncharacterised electronic processing device (for example, a computer) is employed as an intermediary to carry out the method steps — where the method itself is claimed in terms which amount to no more than an abstract idea or scheme”. During the hearing, the appellant had argued that the claimed method falls within the scope of patent-eligible subject matter by virtue of the computer functionality implemented by the method. That is, the appellant argued that computers are essentially generic processing machines that can be employed in any number of computing or processing operations and that, in the present case, the invention resides in the functionality that the method attributes to the computer. In other words, the appellant argued that the invention resides in a functional architecture characterised by the operational steps carried out by the computer, with the claimed method essentially defining a program architecture. It was acknowledged that software code must be written to carry out the method (i.e. it could not be carried out by some generic “off-the-shelf” code) but it was argued that, once the steps or functions to be performed are defined, the code for performing those steps or functions of the method could be written as a matter of routine in a range of different programming languages and in a range of different ways, such that the code itself was not the invention, but rather the functional architecture (i.e. the claimed method) implemented by the code. It was apparent

IPTA submitted that the Commissioner’s “misconceptions” had become established practice when examining patent applications. IPTA said that this was of “central concern to IPTA and its members’ clients seeking patent protection for their inventions”. IPTA said, further, that these “misconceptions” are reflected in the Australian Patent Office Manual of Practice and Procedure (the Manual) on which the Commissioner’s delegates rely for authoritative guidance in the examination of patent applications. IPTA argued that this has “led … to a confused state of affairs in the examination of computer- implemented inventions, and will cause examination of many such applications to miscarry”. Regrettably, however, the Federal Court has decided this appeal without directly addressing or resolving this controversy, stating at paragraph [76]: We do not propose to opine on the correctness of the Commissioner’s decisions to which IPTA referred. Those decisions are not before us in this appeal. Similarly, we do not propose to embark on a consideration of what could be described as IPTA’s editorial comments on the drafting of the Manual. As we reported, the patents concerned a method of comparing data relating to specific entities (such as individuals or companies) stored in different databases and assessing whether the records of the different databases in fact related to the same entities, e.g. despite discrepancies in the data stored in the databases. The patents in suit claimed the invention in the rather abstract context of a “method of displaying information relating to one or more entities” and recited steps performed in an electronic processing device. The patents in suit also claimed an “apparatus for displaying information relating to one or more entities”, with the apparatus defined as including an electronic processing device that performs the various steps of the method. Interestingly, the Federal Court noted in its decision at paragraph [77] We do not see this appeal as raising any significant question of principle, despite the fact that the appellants and IPTA have made oblique attacks on the correctness of Research Affiliates and RPL Central by resort to possible interpretations which, ultimately, they dismiss as misinterpretations ... In truth, the burden of this appeal lies in whether the primary judge correctly applied them to the case at hand. This appeal does not provide the occasion for this Court to set out the metes and bounds of patentable computer-implemented inventions, assuming that be an appropriate task. Pleasingly, at least, the Court again explicitly acknowledges in this statement that computer-implemented inventions may constitute patentable subject matter.