Innovation the biggest loser in High Court rejection

The High Court’s decision to refuse leave to a patent applicant to appeal a decision by the Full Federal Court of Australia has not only left software patent filers all around Australia having to deal with the resultant disarray and uncertainty, it’s also a real blow to the much touted innovation agenda, claims one of Australia’s leading patent attorney firms Shelston IP.

By way of background the High Court of Australia’s (HCA) decision (handed down on 5 May 2016) - and which followed the relatively new practice  of deciding special leave applications on written submissions with no oral hearing - has signalled that it does not wish to vary the newly developed judicial law created by the Federal Court. Australian patent applicants and patentees will have to continue to adapt to the convoluted and seemingly arbitrary law as set out in more recent Federal Court decisions.

According to Shelston IP Principal and Head of the IT & Electronics Group Jack Redfern, “The decision is not only bad news for education facilitator RPL Central, it’s at loggerheads with and undermines Australia’s innovation aspirations.  After all, computer-implemented technologies are vital to our digital future, and particularly critical to the rapidly expanding ed-tech sector.

“Exciting and highly innovative computer-implemented technologies are being developed right here in Australia by start-up or micro companies and cash strapped fledging ed-tech entrepreneurs. Without the financial safety net that a patent provides to protect their intellectual property, and to leverage from it, many may decide the risks just aren’t worth it and quit the innovation scene in Australia,” Mr Redfern added. “The other alternative is that the developments will be simply kept secret, which will slow the cross-fertilisation of technologies that the patent system enables through publication of patent applications.

RPL’s patent application relates to a software platform that enables users to input Recognition of Prior Learning information, via an online “question-and-answer” process.  The Court formulated a new test to assess the invention, being that “A technological innovation is patentable; a business innovation is not”, and “simply putting a business method or scheme into a computer is not patentable unless there is an invention in the way in which the computer carries out the scheme or method.”  The Full Court found that the substance of the RPL’s invention was a business innovation, and that the computer implementation was insufficient to constitute an invention in its own right. On that basis the patent claims were found to be invalid. 

The decision has been criticized for failing to provide adequate workable guidance as to what is required to constitute a “invention” in the way in which a computer is used in the context of commercially-minded innovation. Unfortunately, with the High Court declining to weigh in on the discussion, it is unlikely any higher judicial guidance will be forthcoming for a number of years. 

‘As the Court derived test for computer-implemented inventions has fogged over what was a clear day, it may be time for the legislature to step up and blow away this uncertainty. It’s one thing to talk about innovation, bright ideas and the like  but without the educational, legal and regulatory frameworks to support and nurture its development, turning the rhetoric into a reality is academic,” Mr Redfern concluded.

For further information contact Viv Hardy at CallidusPR on (02) 9283411 or 0411 208 951 or Jack Redfern on (02) 9777 1150

About Shelston IP

Established in 1859, Shelston IP is one of the oldest, largest and most respected specialist intellectual property firms in Australia. We are also, arguably, Australia’s fastest-growing IP firm. Our trade mark attorneys, patent attorneys and IP lawyers provide services and advice relating to the protection, management, commercialisation and enforcement of intellectual property – locally and internationally. www.shelstonip.com