Full Court finds another computer-implemented scheme unpatentable

Date: 08 December 2021
Court: Full Court of the Federal Court of Australia
Judges: Perram, Nicholas and Burley J

Background

Repipe Pty Ltd (Repipe)’s two innovation patents, Australian Patent 2017100560 and Australian Patent 2017100943 (Patents) were granted in 2017. Each patent claimed an invention relating to the sharing of workplace health and safety documents with staff in the field, and completion by the staff of such documents, using computer technology. The invention purported to be an advance over paper-based systems, with the additional advantages of real-time updates and location information.

No substantive examination is conducted of innovation patents before grant. However in order to  enforce an innovation patent, examination must be requested. In this case, examination was requested at the time of filing. After a hearing, the Patents were revoked in 2018 by the Australian Patent Office on the basis that the inventions as claimed were not a manner of manufacture within the meaning of  s18(1A)(a) of the Patents Act 1990 (Cth) (Act).

Repipe appealed to the Federal Court. In that proceeding (Repipe No 1),¹ McKerracher J agreed that the inventions as claimed were not a manner of manufacture. His Honour however gave Repipe leave to amend the claims to overcome this deficiency, while expressing reservations as to whether this was
possible.

Key Issues

In the current decision (Repipe No 3), McKerracher J considered lengthy claim amendments seeking to add significant detail to the configuration requirements of the server or smartphone used in the  invention, and incorporating a GPS tracking feature. Repipe argued that the addition of this technical material overcame the manner of manufacture objections.

McKerracher J found that the amendments were insufficient to do so. In essence, his Honour’s original reservations were borne out, as the amendments did not change the substance of the  invention. Arguments by Repipe that the Full Court’s application of a ‘two stage test’ in Commissioner of Patents v Rokt Pte Ltd² and/or Burley J’s decision in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents³ (both handed down since Repipe No 1), should affect the outcome were rejected, as a matter of principle and because such arguments were properly a matter for appeal of the original decision. It was clear that McKerracher J agreed with the Commissioner’s submissions that in truth, Repipe was seeking to reopen aspects of the original decision.

Outcome

In the Full Court, Perram J (Nicholas and Burley JJ concurring) upheld the first instance decision in  Repipe No 3, finding that the invention did not constitute an advance in technology, but was rather  ‘deployment of existing technology for a useful purpose’.

Repipe sought to draw an analogy with the Aristocrat case. By the time judgment was handed down in
Repipe No 3, the Full Court had overturned Burley J’s decision in Aristocrat.⁴  However in any event, the Full Court in Repipe No 3 concluded that there was no analogy with the facts of Aristocrat. Repipe’s  invention, being implemented via standard mobile devices and servers, comprised a mere use of  existing technology rather than an advance on it.

As to the proposed amendments, Perram J concluded that the attempt to amend was “inherently  unsound”, since the assessment of the invention was a question of substance, not form. ‘Tinkering’ with the form of the patent could not solve the underlying issue since the amendments would need to  transform the nature of the invention, and to achieve this, the amendments would fall foul of s102 of  the Patents Act 1990 (Cth).

Implications

Repipe No 3 joins an increasingly long line of Full Court decisions in which computer implemented inventions have been found unpatentable, and it is becoming clear that an advance in the field of  computer technology is key to patentability.

Repipe has since filed an application for special leave to appeal to the High Court, as has Aristocrat in its case, with Aristocrat’s application already granted. At least the Aristocrat case will therefore be heard by the High Court. We are hopeful that this will add further clarity in this area.

1. Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956
2. [2020] FCAFC 86
3. [2020] FCA 778
4. [2021] FCAFC 202. See our analysis of this case on pages 12-13.