Repipe Pty Ltd filed an application for leave to appeal in regard to the Federal Court’s decision that the claims made in Repipe’s two innovation patents (‘the 943 Patent’ and ‘the 560 Patent’) failed to comprise patentable subject matter. The earlier Federal Court decisions that issued prior to Repipe 35 were Repipe Pty Ltd v Commissioner of Patents (No 1) [2019] FCA 1956 (‘Repipe 1’)6 and Repipe Pty Ltd v Commissioner of Patents (No 2) [2019] FCA 2125 (‘Repipe 2’).7 The innovation patents were directed to a method and system that utilise computer technology, including on a portable device and at a remote location accessible from a fixed computing device, to share and complete workplace health and safety documents.
In Repipe 1, Justice McKerracher dismissed Repipe’s appeal against the Commissioner of Patent’s decision to revoke both innovation patents, agreeing with the Commissioner that the subject matter claimed in the patents failed to comprise patentable subject matter. The claimed inventions were considered to represent a business method and hence not a manner of manufacture. Justice McKerracher stated that even if construction of the specifications alone were to produce a different characterisation, that would be to elevate form over substance. The Patents may well contain a good idea, but they are not a manner of manufacture and are not patentable subject matters.8
In Repipe 2, Repipe appealed the decision in Repipe 1 and requested leave to amend both the 943 and 560 patents.9 Repipe were granted a limited opportunity to amend the patents to address the problems identified, and in this regard Repipe filed a First Amendment Application in January 2020 and a follow up Amendment Application, which comprised amendments to the First Amendment Application, in June 2020.
The Full Federal Court of Australia, in Repipe 3, considered both Amendment Applications, and both Amendment Applications were dismissed on the basis that the defects in the claims were incapable of cure by amendment.10 The Full Court ultimately concluded that the claims made in Repipe’s two innovation patents failed to comprise patentable subject matter.
Since Repipe 3, there have been additional Court decisions dealing with the issue of patentable subject matter most notably the High Court Decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 in which the issue for determination was whether Aristocrat Technologies’ invention relating to a system and method for a feature game on an EGM was patentable subject matter. All members of the Court agreed that an invention must be more than a mere scheme or abstract idea to be patentable, although the Justices were divided as to the proper characterisation of Aristocrat’s invention, hence the patentability of computer implemented inventions under Australian law was not clarified. Consequentially, Repipe filed a special leave application in 2022 seeking to appeal the decision in Repipe 3 but was refused on the basis that the application would turn on a challenge to concurrent findings of fact rather than an issue of legal principle.11
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1 Repipe Pty Ltd v Commissioner of Patents (No 3) [2021] FCAFC 223 (‘Repipe No 3’).
2 Patents Act 1990 (Cth) s 105 (‘Patents Act’).
3 Ibid.
4 Repipe Pty Ltd v Commissioner of Patents (No 1) [2019] FCA 1956 (‘Repipe No 1’).
5 Repipe No 3 (n 25).
6 Repipe No 1 (n 28).
7 Repipe Pty Ltd v Commissioner of Patents (No 2) [2019] FCA 2125 (‘Repipe No 2’).
8 Repipe No 1 (n 28) 101.
9 Patents Act (n 26) s 102.
10 Repipe No 3 (n 25) 3.
11 Repipe Pty Ltd v Commissioner of Patents [2022] HCATrans 84.
