![]() |
Home
| Databases
| WorldLII
| Search
| Feedback
Journal of Law, Information and Science |
![]() |
ANNE FITZGERALD[1] and SCOTT PHILLIPS[2]
This article considers the recent decision of the Full Federal Court in CCOM v. Jiejing. The authors conclude that the approach of the court was to resort to well established principles of patent law. The decision confirms that most forms of software-related inventions are now patentable in Australia.
The recent decision of the Full Court of the Federal Court in CCOM Pty Ltd and anor v Jiejing Pty Ltd and ors[3] confirms the patentability of computer software related inventions in Australia. The question of whether a software related invention is a "manner of manufacture" as required by s18(1) of the Patents Act 1990 is to be determined in accordance with the principles set out by the High Court in National Research Development Corp. v Commissioner of Patents.[4]
For an invention to constitute patentable subject matter under the Patents Act 1990 it must, inter alia, be a "manner of manufacture within the meaning of section 6 of the Statute of Monopolies": s 18(1)(a). Schedule 1 to the Act also refers to the Jacobean formula: an "invention" is "any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies ... " However, the Patents Act 1990 does not furnish a definition of "manner of manufacture", leaving its meaning to be elaborated by judicial interpretation. The only express limitation on patentability contained in the Patents Act 1990 is that found in s 18(2) which states that "human beings and the biological processes for their generation" are not patentable inventions. In this respect, the Australian Patents Act 1990 differs from the Patents Act enacted in the United Kingdom in 1977 which lists specific exclusions from patentable subject-matter. In particular, the Australian Act contains no counterpart to s 1(2)(c) of the Patents Act 1977 (UK)[5] which declares that a program for a computer "as such" is not an invention.
For many years, the Australian Patent Office (APO) routinely rejected patent applications involving computer software but none of these decisions were appealed to the courts.[6] By 1986 it was apparent that Australian practice was diverging from the more liberal practices which had emerged in the United States and the United Kingdom. In March 1986 the APO published new Guidelines for Considering the Patentability of Computer Program Related Inventions which proposed the adoption of the two-part Freeman-Walter-Abele test developed by the US courts.[7] Applying that test, the APO subsequently granted a considerable number of patents for software inventions.[8]
The first Australian case to consider whether computer software related inventions are patentable subject-matter was IBM v Commissioner of Patents (the IBM case)[9], a decision of Burchett J of the Federal Court.[10] The IBM case involved an application for a patent for an improved method of visually representing curve images in computer graphics displays. Coordinate values for the curve image were computed using a known algorithm and the use of integer control points rather than floating point control points produced smoother, more accurate curves. The application was rejected by the Delegate of the Commissioner of Patents on the ground that the claim did not define a "manner of manufacture" as, applying the Freeman-Walter-Abele test, it recited and wholly pre-empted a mathematical algorithm and was not "directed to an industrial process."
On the question of patentability, Burchett J applied the leading authority, National Research Development Corp. v Commissioner of Patents (the NRDC case)[11], quoting with approval the following passage from the High Court's judgment:[12]
... a process, to fall within the limits of patentability ..., must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art ... - that its value to the country is in the field of economic endeavour.
It is, said Burchett J, by requiring "the production of some useful effect" that patent law distinguishes between the discovery of a scientific principle and the making of an invention.[13] His Honour noted that the NRDC case had been followed by the UK Patents Appeal Tribunal[14] in Burroughs Corp (Perkins') Application[15] where a method of transmitting data between a central computer and slave computers connected to it was held to be patentable. The use of the algorithm in the present case was not, concluded Burchett J[16]
... different conceptually from the use of the compounds involved in National Research and Development Council. Just as those compounds were previously known, so here, it is not suggested there is anything new about the mathematics of the invention. What is new is the application of the selected mathematical methods to computers, and in particular, to the production of the desired curve by computer. This is said to involve steps which are foreign to the normal use of computers and, for that reason, to be inventive. The production of an improved curve image is a commercially useful effect in computer graphics. [italics added]
Burchett J held that a method of producing an improved curve image by a computer utilizing a mathematical formula, which also meets the criteria of novelty and inventiveness, is patentable.
Following the decision in IBM, the APO adopted a new practice for dealing with applications for software related patents. Guidelines for determining the patentability of software related inventions were issued by the Commissioner in August 1992. The test to be applied, derived from the NRDC case, simply asks: "Does the invention claimed involve the production of some commercially useful effect?"[17] The new test supersedes the Freeman-Walter-Abele test and examiners are directed not to base objections on the earlier US authorities.[18]
Illustrations of the test are provided:[19]
(a) A method-type claim must define a method which, either directly or by clear implication, embodies the commercially useful effect.
(b) A claim to a mathematical algorithm per se is not patentable, because it does not produce a commercially useful effect. A commercially useful effect can only arise when the mathematical algorithm is implemented in some manner to produce a result.
(c) A claim to a mathematical algorithm when used in a computer is patentable so long as a commercially useful effect is produced.
The guidelines provide the following examples of "commercially useful effects":[20]
(a) an improved image, where the image is commercially useful. In the IBM case, the improved curve image was useful in computer graphics.
(b) an algorithm that results in more efficient operation of a computer.
The decision in the IBM case and the new test subsequently adopted by the APO opened the way for the patenting of software inventions in Australia, simply requiring that a claimed invention must produce a commercially useful result. However, uncertainty was created by the decision of Cooper J at first instance in CCOM v Jiejing[21] in which His Honour held that for computer software operating on conventional equipment to be patentable, it must involve some "steps which are foreign to the normal use of computers". On appeal, the Full Court of the Federal court held[22] that no additional element of novelty was required for computer software related inventions to constitute a "manner of manufacture" under the Patents Act 1990. The test to be applied in ascertaining whether a software related invention is patentable subject matter is that which was stated by the High Court in NRDC.
The case arose out of a dispute between parties who had initially worked together in the development of computer software for generating text in Chinese characters. CCOM was granted an Australian petty patent[23] for an invention entitled "Symbol Definition Apparatus". The claim in the petty patent was a combination claim for a "computer processing apparatus for assembling text in Chinese language characters." The apparatus consists of conventional computer equipment including a database, a means of visual display, a keyboard and a search means. The database contains Chinese characters encoded by stroke-type and the order in which the strokes are written, a retrieval program and graphic representations of each Chinese character. Using the keyboard, the database is searched by entering the character stroke-types in the order written by a literate Chinese writer, "whereby upon entry of said search criteria the graphic representation of the, or each, Chinese character which meet the said search criteria" are retrieved and displayed on the visual display. Text in Chinese language characters is assembled by selecting one of the graphic representations retrieved.
CCOM commenced proceedings against Jiejing, alleging that its petty patent had been infringed. Jiejing was supplying computer programs also intended for use in a conventional computer for assembling text in Chinese language characters. Jiejing cross-claimed for revocation of the petty patent, inter alia, on the ground that the apparatus was not a patentable invention in that it was not a "manner of manufacture" in the terms of s 18(1)(a) of the Patents Act 1990.
Relying on the IBM case, the applicants submitted that the computer as programmed constituted an invention under the Patents Act 1990 as, by assembling Chinese characters on a visual display unit, it produced a useful effect. Cooper J reviewed the UK, US and Australian authorities dealing with the patentability of software related inventions: Burroughs Corp (Perkins's) Application[25], International Business Machines Corp's Application[26], Merrill Lynch's Application[27], Gale's Application[28], Wang Laboratories Inc's Application[29], Re Freeman[30] and Re Abele[31].
In discussing the Federal court decision in IBM,[32] Cooper J noted that Burchett J had applied the test of patentability set out by the High Court in the NRDC case.[33] Cooper J seemed to attach particular weight to the passage in the IBM case where Burchett J referred to steps "foreign to the normal use of computers":[34]
What is important is that his Honour focuses on steps which are foreign to the normal use of computers to achieve an advance over the prior art by producing a curve for use in computer graphics without the perceived deficiencies in the prior art. That is, the mathematical methods claimed in the patent application led to the computer qua computer producing a better result than was previously achievable with the prior art, which result, an improved curve image, was a commercially useful effect in the field of computer graphics.
Applying this analysis, Cooper J found that the present claim did not involve any "steps which are foreign to the normal use of computers" or any procedure for "overcoming any problem in the computer as such or the way in which it operates."[35] The function of the apparatus described in the claim was the assembly of text in Chinese language characters by searching a database by stroke-type and order and choosing among the characters thereby retrieved and displayed. This was a conventional function of a computer programmed with a word processing program.[36] Cooper J concluded:[37]
There is nothing claimed as new or unconventional in the input, search or display programs. In essence what is sought to be done is to use the computer to store the result of the linguistic task undertaken outside the computer, which mental process lies in the fine arts and not the useful arts, and to use the computer operating in a conventional way with conventional programs to reproduce the mental process of identifying the desired Chinese character by applying search criteria which represented the linguistic features of the character as determined by the linguist and stored in the memory of the computer.
Cooper J held that the claim did not disclose a "manner of manufacture" within the meaning of s 6 of the Statue of Monopolies and, there being no patentable invention, declared the petty patent invalid.
On appeal before the Full Court of the Federal Court (Spender, Gummow, Heerey JJ) the appellants renewed their submission that, as the computer apparatus produced a useful effect by enabling Chinese language characters to be retrieved and displayed for assembly in text, it was a patentable invention under the Patents Act 1990.
In regard to the concept of "manner of manufacture", the Full Court said that the NRDC case is of continuing importance. As the decision had been applied in Britain, guidance on the question of the patentability of computer software related inventions could also be obtained from decisions of the British courts prior to the enactment of the Patents Act 1977 (UK) applying the principles in the NRDC case to this field. The court noted that Cooper J, at first instance, had been referred to a number of UK authorities, some of which post-dated the introduction of the Patents Act 1977. The Full Court warned that care is needed here because the "manner of new manufacture" formula no longer supplies a criterion for patentability under the 1977 UK Act. Further, s 1(2)(c) of the UK Act specifically excludes from patentable subject matter "a program for a computer" to the extent that a patent relates to the computer program "as such". However, when enacting the Australian Patents Act 1990 the legislature made a deliberate choice not to set out categories which are excluded from patenting, the single exception being found in s.18(2). Instead, parliament chose to retain the concept of "manner of manufacture" within the meaning of s.6 of the Statute of Monopolies, as developed by the courts over the years and notably by the High Court in the NRDC case.
The Full Court said that the question of whether a computer software related invention is a "manner of manufacture" is therefore to be determined in accordance with the principles stated by the High Court in the NRDC case. The High Court pointed out that the question to be asked in determining patentability is:[39]
[I]s this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?
The Full Court referred to passage in Cooper J's judgment in which his Honour suggested that for there to be a "manner of manufacture"[40] a software invention would have to involve something new and unconventional in computer use. The court pointed out that in the Patents Act 1990, manner of manufacture, novelty, inventiveness and utility are set out as distinct requirements of a patentable invention. The structure of s 18(1) in the 1990 Act emphasises that these requirements have been carved out from the general body of case law which developed the phrase "manner of new manufacture" in the 1623 Statute. The fact that, over the years, "manner of new manufacture" came to represent the concept of invention as distinct from novelty is made clear by the use of the phrase "manner of manufacture" in the 1990 Act.
In considering the application of the principles expounded in NRDC, the court was guided by two cases decided under the pre-1977 British patent legislation in which computer program related inventions were held to be patentable: International Business Machines Corporation's Application[41] and Burroughs Corporation (Perkin's) Application[42]. The decision in Burroughs Corporation (Perkin's) Application was followed by Burchett J in the IBM case. Applying the principles stated in NRDC and following the pre-1977 British decisions, the Full Court held that the appellants' petty patent should not have been held to be invalid on the ground that the claim did not define a "manner of manufacture." The NRDC case requires:[43]
a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour.
Here, the relevant field of economic endeavour is the use of word processing to assemble text in Chinese language characters. The end result is the retrieval of graphic representations of characters, for assembly in text. The manner in which this is achieved is by storing data relating to Chinese characters arranged according to stroke-type, which can be searched so that the desired character can be selected from those retrieved and displayed.
The invention was held invalid on other grounds. The court found that the claim in the petty patent was not fairly based on the provisional specification lodged in 1988, so the correct priority date of the petty patent was July 1991. The patent had been anticipated by the sale of the respondents' products in December 1989 and was for that reason invalid.
There are strong parallels between recent US and Australian decisions on the patentability of software related inventions.[44] In both jurisdictions there is a distinct trend away from the application of the two-part Freeman-Walter-Abele test, with the courts favouring recourse to well established broad principles of patent law. This is apparent in the judgment of the Full Federal Court in CCOM v Jiejing where the court applied the principles established in the NRDC case which has long been a cornerstone of the law on patentability in Australia.
The decision in CCOM v Jiejing confirms that most forms of software-related inventions are now patentable in Australia, as computer programs are usually created with the intention of producing some "end result which is ... of utility in the field of economic endeavour." Clearly though, an algorithm per se, such as that featured in Gottschalk v Benson[45], which produces a commercially useful end result only when used in conjunction with other software, will remain outside the scope of patentable subject matter. The decision can be expected to lead to a substantial increase in software patenting activity in Australia similar to that which is occurring in the United States.
[1] LLB(Hons) (Tasmania), LLM (London), LLM (Columbia) Lecturer in Law, University of Tasmania
[2] Student, University of Tasmania Law School
[3] [1994] FCA 396; (1994) 28 IPR 481
[4] [1959] HCA 67; (1959) 102 CLR 252
[5] Based on Article 52(2)(c) of the European Patent Convention
[6] For example N V Phillips Gloeilampenfabrieken's Application (1966) 36 AOJP 2392; see D Webber, Patents and Trade Marks for Hardware and Software in G Hughes (ed), Essays on Computer Law (1990) at 102-108
[7] For a more detailed description of the Freeman-Walter-Abele test, see J Swinson, Software Patents in the United States, (1993) 4 JLIS at 120-123 and Notes from the United States, (1993) 4 JLIS at 295
[8] D Webber, Patenting Computer Software, (July 1992) 19 Computers & Law at 17
[9] [1991] FCA 625; (1992) 22 IPR 417
[10] For further discussion of the IBM case see David Webber, Software Patents: A New Era in Australia and the United States? [1993] 5 EIPR 181
[11] [1959] HCA 67; (1959) 102 CLR 252
[12] (1992) 22 IPR at 423
[13] ibid
[14] Graham and Whitford JJ
[16] (1992) 22 IPR at 424
[17] Patent Office Guidelines, para 35.66
[18] ibid, at para 35.70
[19] ibid, para 35.67
[20] ibid, at para 35.69
[21] [1993] FCA 653; (1993) 27 IPR 577
[22] [1994] FCA 396; (1994) 28 IPR 481
[23] No. 616154; sealed 26 August 1991
[24] CCOM Pty Ltd and Anor v Jiejing Pty Ltd and Ors [1993] FCA 653; (1993) 27 IPR 577, Federal Court of Australia, General Division, Cooper J
[30] 573 F.2d 1237 (1978)
[31] 684 F.2d 902 (1992)
[32] [1991] FCA 625; (1992) 22 IPR 417
[33] [1959] HCA 67; (1959) 102 CLR 252
[34] (1993) 27 IPR at 591, referring to Burchett J in the IBM case [1991] FCA 625; (1992) 22 IPR 417 at 424; see note 16 supra
[35] ibid at 592
[36] ibid
[37] ibid at 593
[38] [1994] FCA 396; (1994) 28 IPR 481
[39] (1994) 28 IPR at 509
[40] note 16 supra
[43] (1994) 28 IPR at 514
[44] For a review of recent US decisions, see the article by J Swinson, Recent Software Patent Developments in the United States, [1994] 5 JLIS pp
[45] [1972] USSC 223; 409 U.S. 63 (1972)
AustLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.austlii.edu.au/au/journals/JlLawInfoSci/1994/18.html