In a favourable decision for patent applicants, the Federal Court of Australia recently overturned a decision by the Commissioner of Patents whilst clarifying the test for patentable subject matter. In doing so, the Federal Court concluded that the Commissioner's reliance on Research Affiliates v Commissioner of Patents1 (Research Affiliates) and Commissioner of Patents v RPL Central Pty Ltd2 (RPL Central) is inappropriate unless the claimed invention is a business method or scheme.
Technological Resources Pty Limited (Technological Resources) was the applicant of Australian Patent Application No. 2011261171 (the 171 Application), an invention related to methods and apparatus for upgrading ore. The independent claims can be summarised by the following steps:
- reducing mined ore to a "primary crushed ore particle size";
- assessing the grade of successive segments of the crushed ore by "direct assessment of grade" as the crushed ore is transported along a pathway;
- bulk sorting, i.e. separating each segment of the crushed ore on the basis of grade of the segment into a category that is at or above a first-grade threshold or a category that is below the first-grade threshold by dry sorting the segment; and
- processing separated segments in a downstream processing plant and producing upgraded material.
Raymond Ludwig John Tettman opposed the 171 Application on various grounds including that the claims were not to a manner of manufacture (i.e. unpatentable subject matter). The delegate refused the 171 Application on the basis that the invention was directed to a mere scheme3. In reaching this conclusion, the delegate relied on principles from Research Affiliates and RPL Central which relate to computer implemented business methods.
Federal Court Decision
The Federal Court handed down its decision, Technological Resources Pty Limited v Tettman4, on 15 November 2019. Jagot J outlined in the decision submissions filed by Technological Resources in the following manner:
- Research Affiliates and RPL Central have no application in the present case as the invention here is not a business method or scheme of the kind which has never been patentable;
- it is not necessary in this case to look for "technical" components, or the use of something other than "generic" technology. Such considerations might have been relevant if the invention was in truth directed to a computer-implemented business method or scheme, such that it was necessary to search for patentability in the manner of its implementation in a computer. That is simply not the case here;
- it is inapt and inappropriate to describe the substance of the invention as "nothing more than the arrangement of mineral processing concepts" or "a logistical process". As submitted, the invention is a method and apparatus for the processing of mined ore. It involves physical process steps which can only be carried out using physical apparatus on a physical product;
- it is not to the point that the assessment of grade in a particular case may be said to be "subjective", or "dependent on costs of a customer specification". That simply means that the threshold for the assessment of grade in a particular case will be selected according to the requirements of that particular case. There is nothing unusual about this, and it does not support any finding that the invention claimed is a "mere scheme" and not a manner of manufacture; and
- references to the prior art and to the technical features of the invention being "all well-known processes" impermissibly intrude conceptually distinct elements of patentability, i.e. novelty and inventive step, into the consideration of whether the methods and apparatus claimed in the 171 application are directed to a manner of manufacture."5
Her Honour concluded:
"I accept the appellant's submissions. The claimed invention is not analogous to those considered to be mere schemes. Accordingly, the reasoning in the mere scheme cases is inapt. The delegate's reasoning, in my view, involves a mischaracterisation of the claimed invention. As the appellant said, the invention involves physical steps carried out on a physical product using physical apparatus, to produce a physical and tangible result. It does not bear a resemblance to the cases on which the delegate relied. No meaningful analogy to those cases may be drawn."6
This decision is favourable for applicants seeking patent protection for inventions which involve "physical steps carried out on a physical product using physical apparatus, to produce a physical and tangible result". The decision would appear to have applicability to inventions which involve use of a computer which result in a physical and tangible result.
This decision highlights that the test for patentable subject matter in Australia shares similarities to the two-step test for eligible subject matter in the US. If the substance of the invention is a "technological innovation", then the invention satisfies patentable subject matter requirements without further consideration. However, if the substance of invention is a "scheme", further analysis is required to determine whether there is a threshold degree of inventiveness in the manner in which the scheme is implemented. This further analysis involves looking at a non-exhaustive list of factors, such as those summarised in Aristocrat Technologies Australia Pty Limited7, including:
- Is the contribution of the claimed solution technical in nature?
- Does the claimed solution solve a technical problem?
- Does the claimed invention merely require generic computer implementation?
This decision has not been appealed by the Commissioner of Patents and has provided a degree of clarity to patentable subject matter requirements in Australia.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.