A series of Federal Court decisions related to computer-implemented inventions had left the patent community with a lack of clarity as to how those decisions should be applied.
This resulted in a significant degree of uncertainty for patent applicants. However, the recent Appeal decision in Commissioner of Patents v Rokt Pte Ltd  FCAFC 86 appears to resolve many of those ambiguities.
The Full Court’s prior decisions have clearly indicated that business methods, implemented on conventional computers, do not satisfy the requirement for patentable subject matter. Different interpretations of these earlier decisions has, however, lead to uncertainty about where the boundaries lay. Particularly, how can you determine whether the invention is implemented on a generic computer or a bespoke one? And to what extent can the state of the art be relied on in deciding the answer to this question?
This confusion led to unconventional approaches being taken, including the Rokt case. At first instance, Rokt made substantial use of expert evidence to argue that the invention was more than a generic use of a computer. The Commissioner also submitted extensive expert evidence to the contrary. This ran counter to previous cases where patentability was traditionally considered a question of law rather than fact. However, it resulted in success for Rokt at first instance with the Judge being heavily influenced by the expert evidence. Since then, this approach has been adopted in other cases which amongst other things, adds to proceeding expenses.
On this occasion, the Court overturned the judgement at first instance, making it clear that expert evidence is of limited value. The Court ruled that although such evidence may help the Court understand what invention is claimed by the patent, it should not be used to determine where the invention lies.
The Court also highlighted that the relevance of common general knowledge is also only to assist the Court in understanding the claimed invention. It should not be used to reduce the assessment of an invention’s patentability to those features left over after removing features that are considered to be part of the state of the art.
Instead, the Court suggests that the assessment of patentable subject matter should be made based on whether reading the specification in context indicates that:
- the substance resides in a business method itself, or
- whether it resides in the software implementation (that the computer is integral to the invention).
The Court states that indicators pointing to inventions which do not lie in the software implementation may be that “the claims in suit do not secure, as an essential feature of the invention, any particular software or programming that would carry out the method and the method is entirely left to those wishing to use the method to devise and implement a suitable program for that purpose and all the specification teaches is that the processing system may be ‘suitably programmed’” to implement the business method.
In context of this decision, patent applicants and practitioners should delve deeper into business related inventions; asking whether there are technical developments which enable the implementation of the business method in a manner that can be said to be more than using a computer for its basic, typical or well-known functions. If any such technical developments exist, these must be described in the specification and incorporated into the claims to secure a patent.
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