Wednesday, July 27, 2011

Myall Australia v RPL Central – the case of the zealous Commissioner

It’s not every day that an opponent succeeds in invalidating an innovation patent on a ground it did not even raise.  In Myall Australia Pty Ltd v RPL Central Pty Ltd [2011] APO 48, we see the Deputy Commissioner assume an inquisitorial role rather than an adversarial one.

The RPL patent

RPL Central Pty Ltd (“patentee”) filed innovation patent application 2009100601 on 22 June 2009.  The title of the patent is “Method and System for Automated Collection of Evidence of Skills and Knowledge”.  IP Australia certified it on 22 October 2009 following a request for examination by the patentee.

In Australia there is, according to the patentee, some difficulty for an individual in identifying a particular qualification to which they may be entitled under an RPL (Recognition of Prior Learning) programme.  The patentee’s invention uses technology to make the job easier.

Was it new?

Myall Australia Pty Ltd (“opponent”) filed a notice of opposition on 22 March 2011.  The opponent advanced its own RPL Evidence Collection Tool (“RPL Tool”) as rendering the present invention not novel.

A hearing was set down for 18 May 2011 and a decision issued on 12 July 2011.  The Deputy Commissioner reviewed the evidence presented by the opponent in respect of the RPL Tool.  The independent claims of the innovation patent were found to contain two features not present in the RPL Tool.

So yes, all claims were novel.

Was it an invention?

On 29 April 2011, a few weeks before the hearing, the parties were told to prepare additional submissions on a further possible ground of lack of manner of manufacture.  This was not a ground raised by the opponent.

The Deputy Commissioner accepted that there is some physical effect or transformation in the computer in the way the method of claim 1 is operated.  But did it involve a physical effect in the sense of a concrete phenomenon or manifestation or transformation in line with the observations made in Grant v Commissioner of Patents [2006] FCAFC 120?

He looked to comments made by the Deputy Commissioner in Invention Pathways [2010] APO 10 and concluded that the invention fell short of having the requisite physical effect.

The invention defined a method for gathering information where the data retrieval, processing and storage of information appear to have no physical effect other than what would arise in the computer with standard software in conventional use.  There was no substantial effect or transformation in generating the questions by concatenating text matters.

While the internet and the computer facilitate the operation of the claimed method by retrieving, generating and conveying information, they are not central to the purpose of the claimed invention.

The Deputy Commissioner found that the claims did not define a manner of manufacture.

There’s an invention in there somewhere

The Deputy Commissioner then observed that the patent description contemplates generating the questions automatically based upon the identification of particular keywords within the assessable criteria, and upon additional contextual information.

If the claims were amended to include those features, said the Deputy Commissioner, then the claimed method would result in a substantive transformation of data not amounting to a mere cut and paste.  The amended claims would satisfy the requirements of a manner of manufacture.

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