Patentability of Computer Implemented Methods Further Considered

In RPL Central Pty Ltd v Commissioner of Patents a Federal Court Judge rejected the Patent Offices narrow approach to the patentability of computer implemented inventions.
RPL’s application concerns a method and system for the automated collection of evidence of skills and knowledge. Claim 1 involves the following steps:

1. a computer retrieving via the internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
2. the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
3. an assessment server presenting the automatically-generated questions via the internet to a computer of an individual requiring assessment; and
4. receiving from the individual via their computer a series of responses to the automatically-generated questions, the responses including evidence of the individual’s skills, knowledge and experience in relation to each of the elements of competency and performance criteria, wherein at least one said response includes the individual specifying one or more files on their computer which are transferred to the assessment server.

The Court applied the flexible approach to patent eligibility espoused in the 1959 High Court NRDC decision in rejecting the objections to patentability. The invention was found to have utility and produce economically beneficial outcomes. It was also held that the computer implemented steps created an artificial state of affairs that resulted in physical effects, such as the presentation of questions to the user. The Court held that these physical effects did not need to be substantial or central to the claimed purpose. The computer implemented steps were deemed to be of sufficient substantiality and effectively necessary to the worthwhile implementation of the method. While on such an approach it might be argued that any computer implemented method would satisfy the artificial state of affairs requirement, the Judge was satisfied that each case would have to be judged on its merits. The Judge held that attempting to strip away the computer implemented aspects of the method so as to be left with a business method was unjustifiable. The computer is essential to the invention as claimed and it would not be feasible to perform the method without a computer. The Federal Court Judge used this last point and the detailed disclosure to distinguish this case from the contrary finding on patentability in the recent case of Research Affiliates LLC v Commissioner of Patents.