Another setback for software patents

By Artemis Kirkinis
Intellectual Property Patents & Trade Marks

A technical solution to a technical problem 3 min read

Repipe Pty Ltd v Commissioner of Patents (No 3) [2021] FCA 31 (Repipe No. 3) is another setback for computer-implemented inventions. Despite permitting Repipe to amend its patents to overcome the lack of manner of manufacture findings in Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956 (Repipe No. 1), the Federal Court held such defects as to manner of manufacture could not be cured by amendment.

This decision serves as an important reminder that patentability requirements require computer-implemented inventions to involve, as a matter of substance, a technical solution to a technical problem, and that it is absolutely critical to reflect this in the way software patents are drafted at the outset.

Key takeaways

  • To be patentable subject matter, a software invention, as a matter of substance, is to involve an improvement to technology. Claims that are nothing more than an instruction to carry out a scheme using generic computer technology will not satisfy patentable subject matter requirements.
  • The way a patent specification is drafted at the outset is critical. Patentees should not rely on an application to amend a patent as a safe fallback for the purposes of satisfying the requirement of patentable subject matter. 

Who in your organisation needs to know about this?

Software inventors and engineers, patent attorneys and in-house counsel.

The story of software patents so far

Repipe No. 3 comes after a line of recent Federal Court decisions that have invalidated computer-implemented business methods on the basis that such inventions are not patentable subject matter.

In Encompass Corporation Pty ltd v Infotrack Pty Ltd [2019] FCAFC 161, the Full Federal Court held that the method for displaying business intelligence information was not patentable subject matter (see our Insight on Encompass).

Similarly, in Commissioner of Patents v Rokt Ltd [2020] FCAFC 86, the Full Federal Court overturned the trial decision and held that a digital advertising system or method arranged to enhance levels of consumer engagement was not patentable subject matter (see our Insight on Rokt). The test established in this Full Federal Court decision involves asking whether the computer is a mere tool in which the invention is performed (unpatentable) or whether the invention lies in computerisation (potentially patentable).  

Relevantly, in Repipe No. 1, the Federal Court held that the computer-implemented invention, which was a system for providing and receiving information using computer technology in the context of workplace health and safety, was not patentable subject matter. The court said, at [93]-[94]:

No specific application software has been claimed or even identified in any claim of the Patents. No computing programming logic or code is disclosed anywhere in the Patents. ... The substance of both inventions is 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. …

The language used by patent attorneys when drafting and amending claims cannot convert what is, in substance, an unpatentable business method or scheme into a patentable invention by merely asserting that the invention is in the field of computer technology or by using words or in the claim or specification that refer to computer technology...

In Repipe Pty Ltd v Commissioner of Patents (No 2) [2019] FCA 2125, the court permitted Repipe a limited opportunity to amend its patents to overcome the problems identified above.

A patent amendment application to no avail

Despite this opportunity (and glimmer of hope for software patents), the court ultimately dismissed Repipe's first patent amendment application and refused its second amendment application.

As to the first application, Repipe contended that the amendments added significant detail to the configuration requirement of the server and smartphone device to enable performance of the steps.

The Commissioner contended that if the detail was properly drawn from the specification it could not transform the substance of the invention into a manner of manufacturer given the court's reasoning in Repipe No. 1 and, if it is not drawn from the specification, the amendments could not be allowed under section 102 of the Patents Act which prohibits an amendment if the matter extends beyond that disclosed in the complete specification as filed.

The court agreed with the Commissioner.

It held that the proposed amendments did not change the substance of the invention. It did not change the fact that each patent was directed to solving a business problem in the field of workplace health and safety and did not present a technical solution to a technical problem. The court said the claims were nothing more than instruction to carry out a workplace health and safety document scheme using generic computer technology.

As to the second patent amendment application, which proposed even further amendments, the court refused it having regard to principles of finality of litigation.

The drafting of a software patent specification is critical

Repipe No. 3 reinforces the critical importance of drafting a software patent specification at the outset.

Based on the case law, the invention and corresponding specification including the description and claims should include, as a matter of substance, not form, meaningful technical content. This may involve, for example, disclosure of the computer programming logic or code or technical means that the computers use to carry out the steps and process. Claims that are nothing more than an instruction to carry out a scheme using generic computer technology will not suffice.