How to protect computer implemented inventions

With the constant development and advancement of digital technologies, we often get asked how computer implemented inventions (CIIs), processes and business systems can be protected.

Whether or not CIIs are patentable subject matter is widely debated even by the Courts, and as can be observed via the timeline of cases below, there is no resounding conclusion to date.

Year 2014: Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150

This case related to an invention for producing an index of securities or assets via computer. In this case, Justice Emmett held that the only physical result generated by the method in question was the computer file containing the index and that this index was nothing more than a data set:

“The index is simply information…a set of numbers. It is no more a manner of manufacture than a bank balance, whether represented as data in a bank’s computer, written on a piece of paper or kept in a person’s memory. While it is true that the index may be stored in the computer’s RAM… on a memory device, or transmitted, that can be said of any data generated by a computer. If that were sufficient to satisfy the requirement of an artificially created state of affairs, any computer-implemented scheme would be patentable, merely by reason of the fact that it happens to be implemented by a computer.” (at [67])

Upon appeal, the Federal Court upheld this decision, dismissing an appeal finding that the claimed invention was not a manner of manufacture.

“The specification makes it apparent that any inventive step arises in the creation of the index as information and as a scheme. There is no suggestion in the specification or the claims that any part of the inventive step lies in the computer.”

Year 2015: Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177

This case related to a system and method for gathering evidence relevant to the recognition of prior learning. The invention claimed here gathered all relevant information relating to competency standards and generated a questionnaire to be answered by an individual with text or uploaded files.

The Commissioner of Patents held that the claims of the patent did not constitute a manner of manufacture on the grounds that more than mere use or operation of the computer is required to make a scheme patentable.

At first instance, Justice Middleton held that computer-implemented inventions may be patentable where the specification details how the computer is integral to the invention. This decision indicated that the concept was starting to evolve, as it was in contrast to the Research Affiliates case.

However, upon an appeal lodged by the Commissioner of Patents, the Full Court overturned the judgment of Justice Middleton and ruled that the invention did not involve a manner of manufacture on the grounds that the method did not include any steps outside the normal use of a computer:

‘[w]here the claimed invention is to a computerised business method, the invention must lie in that computerisation.’ (at [96])

Year 2020: Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86

This case dealt with whether a ‘computer implemented method for linking a computer user to an advertising message by way of an intermediate engagement offer which is operable to drive a higher level of engagement with the advertising message than if the advertising message was presented without the offer…’ involved a manner of manufacture.

The Federal Court considered the following questions:

1. What is the substance of the invention?
2. Does the invention solve a technical problem?
3. Is the use of a computer integral to carrying out the invention, or could the invention be carried out in the absence of a computer?
4. Does the invention involve steps that are foreign to the normal use of computer (at the priority date)?

Here Justice Robertson found that the invention as claimed did involve a manner of manufacture, however much like the previous cases, the Commissioner of Patents successfully appealed the first instance decision and the Court found that:

‘…in our view nothing about the way that the specification describes the computer hardware or software indicates that either is any more than a vehicle for implementing the scheme, using computers for their ordinary purposes.’ (at [109]).

Year 2022: Aristocrat Technologies Australia Pty Limited & Commissioner of Patents

The decision of the High Court of Australia in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 related to four innovation patents claiming an electronic gaming machine (EGM). The EGM was found to lack a manner of manufacture and Aristocrat applied to the Court.

At first instance it was found that:

‘mere scheme or plan’ but rather a ‘mechanism of a particular construction, the operation of which involves a combination of physical parts and software to produce a particular outcome in the form of an EGM that functions in a particular way.’ (see [95])

In finding that the invention did involve manner of manufacture, Justice Burley held that to find that such a gaming machine was not patentable would be ‘antithetical to the encouragement of invention and innovation.‘ (at [102]).

Akin to the previous cases, upon appeal the Full Court found in favour of the Commission of Patents, which then triggered a further appeal to the High Court.

Here the High Court agreed that to constitute a ‘manner of manufacture’, it must be more than a mere scheme or abstract idea that is simply implemented onto a computer. Nevertheless, the High Court was divided in its characterisation of Aristocrat’s invention, leading to different conclusions on its patentability and ultimately no clear outcome.

Interestingly, in this case the judges were split 50/50. Whilst 3 judges shared the view that without variation of generic computer technology to implement the ‘feature game’, the claimed invention was an abstract idea and therefore, not patentable subject matter, the other 3 judges found that the invention was not merely the idea of a game incorporated into a generic EGM, and that it actually involved a degree of inventiveness or novelty so as to constitute a patentable invention.

Post-2022

As a consequence of the Aristocrat case, significant uncertainty remains around the question of how to determine whether a CII can constitute patentable subject matter.

However, since Aristocrat there have been two single-judge decisions that indicate that it may be feasible for businesses to successfully obtain patent protection for computer-implemented inventions:

• • Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585); and
  • UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885

In the ‘Motorola’ case, Justice Perram found Motorola’s claim that their communications technology that “permits a frequency band within the radio spectrum (a channel) to be divided into timeslots so that more than one person may use the same channel at the same time” did constitute a manner of manufacture as it was a computer implemented invention that improved scanning times.

In the Ubipark case, the business claimed that a system, comprising a communication system and a computer program executable by a mobile communication device, was “configured to determine signal strengths of entry signals and exit signals to control a user’s entry into and exit from a restricted area, in conjunction with the use of authorisation data”. Whilst acknowledging that a computer executed the instructions, Justice Moshinsky found “concrete, tangible, physical, or observable effect” in that the instructions result in the opening of an entry barrier and an exit barrier, delivering a useful physical or tangible result.

Where to next?

This lack of clarity around the state of the law on patentable subject matter for computer-implemented inventions has created an uncertain atmosphere for business owners and operators as to what CIIs can be patented in Australia.

Therefore, it is essential for business owners and operators to adopt a holistic approach when it comes to the protection and monetisation of their innovations. This means utilising measures such as copyright (which is inherent at the point of creation), as well as confidentiality contracts, non-disclosure agreements and more.

Please contact us with any questions you may have about protecting your business.