Patents – manner of manufacture – s 102(1) – s 105
In Repipe Pty Ltd v Commissioner of Patents (No 3) [2021] FCA 31, McKerracher J concluded that the claims made in two innovation patents did not disclose patentable subject matter because the claims were not to a manner of manufacture, and refused Repipe’s appeal from the decision of the Commissioner to revoke the patents. McKerracher J also refused leave to amend under section 105 of the Patents Act 1990 (Cth).
The relevant claims were to a method of providing information for risk management to a user of a personal computing device, and effectively consisted of the use of the features of GPS-enabled mobile devices to communicate with a server in a particular way.
In this decision, Repipe sought leave to appeal from McKerracher J’s decision.
Repipe’s central submission was that the functionality lay in the configuration of the mobile devices and the server, which was akin to the useful apparatus in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2020] FCA 778 (which case was overturned between the hearing of the application for leave and the judgment on the application in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCFAC 202, although we also note that special leave has been granted for an appeal to the High Court).
The Court refused leave. Justice Perram delivered the leading judgment. His Honour accepted that the invention was useful and represented a clever use of mobile devices and a server, but said it did not constitute an advance in computer technology, but rather a deployment of existing computer technology for a useful purpose. As such, he held that it did not constitute patentable subject matter.
Justice Perram observed that even if Aristocrat had not been overturned, there was no analogy with the case, because the invention was no more than some mobile devices connected to a server configured to behave in a particular way (i.e., it was not to a physical apparatus). His Honour observed that the invention was not directed to solving problems in the field of computer technology (unlike the two cases where the patentability of computer implemented inventions was upheld, International Business Machines Corporation v Commissioner of Patents [1991] FCA 625; (1991) 33 FCR 218 and CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 396; 51 FCR 260).
Justice Perram also held that McKerracher J was correct to refuse leave to amend to address the absence of patentable subject matter. He noted the question of characterising the invention for the purpose of assessing patentability was to be determined as a matter of substance and not form, and tinkering with the form of the patent could not transform the invention into one that represented an advance in computer technology. If the amendments succeeded in doing so, what would be disclosed would be a different invention, and proscribed by section 102(1), which prohibits amendments which would claim or disclose matter that extends beyond that disclosed. For that reason, Perram J considered the amendments necessarily either did not overcome the problem, or were precluded.
The application for leave to appeal was refused with costs. However, Repipe has been granted a hearing for its special leave application, which will not take place before May 2022.
This decision confirms the formidable hurdles facing applicants for computer implemented inventions. Inventions which cannot be characterised as an advance in computer technology will not be a manner of manufacture. This is not a problem that can be solved by subsequent amendment, given the current form of section 102 (post-Raising the Bar). It will be interesting to see whether this position changes as a result of the High Court’s decision in the Aristocrat appeal, or on appeal in this case.