To patent or not to patent... computer implemented inventions in Australia

Article  \  17 Dec 2012

The Australian Federal Court of Appeal recently heard two separate appeals on decisions by IP Australia not to grant patents for computer-implemented inventions in Australia.

IP Australia has granted patents for computer-implemented inventions for over two decades.  Post-Bilski, however, a policy change at IP Australia has led to a growing body of hearing decisions that have repeatedly rejected the patentability of computer-implemented inventions in Australia and introduced significant uncertainty.[1]  IP Australia argues for an invention to be patentable, the claims need to define some effect, phenomenon, manifestation or transformation 'that is significant both in that it is concrete but also that it is central to the purpose or operation of the claimed process or otherwise arises from the combination of steps of the method in a substantial way'.[2]

Research AffiliatesandRPL Central Ptyarethefirst judicial challenges to IP Australia's stance on the patentability of computer-implemented inventions.  Hopefully the Court will take these opportunities to provide some much-needed guidance for both administrators and users of the patent system.

Research Affiliates v Commissioner of Patents

Research Affiliates was heard by Federal Court Justice Middleton in Sydney on 21 November 2012.  Research Affiliates appealed against two hearing decisions in which IP Australia refused to grant patents for two related applications based on IP Australia's own earlier Invention Pathways[3] decision.  Both of Research Affiliates' applications relate to the construction and use of passive portfolios and indexes for investments in securities.  The applications include method, system and machine readable medium claims.

RPL Central Pty v Myall Australia

RPL Central Ptywas heard by Federal Court Justice Emmett in Melbourne on 7 December 2012.  RPL Central appealed against a decision of IP Australia not to allow claims relating to a method and system for a Recognition of Prior Learning (RPL) programme for identifying qualifications individuals may be entitled to.

TheRPL Central Ptyappeal follows an opposition hearing that was interesting because the Deputy Commissioner of Patents took on an inquisitorial role.  The sole ground pleaded by the opponent (Myall Australia) was that the claimed invention lacked novelty.  A few weeks before the hearing, however, the Deputy Commissioner took the unusual step of asking the parties to prepare additional submissions on a further possible ground not raised by the opponent - whether the claims related to a 'manner of manufacture' (patent-eligible subject matter).  The opponent was successful in opposing the grant of a patent, but only on the ground first raised by the Deputy Commissioner shortly before the hearing.

Decisions from both of the Federal Court appeals have been reserved and are expected to issue in about two-three months.

[1] See, for example, Invention Pathways Pty Ltd [2010] APO 10 (21 July 2010), Iowa Lottery [2010] APO 25 (21 October 2010), Research Affiliates, LLC. [2010] APO 31 (17 December 2010), Myall Australia Pty Ltd v RPL Central Pty Ltd [2011] APO 48 (12 July 2011), Discovery Holdings Limited [2011] APO 56 (9 August 2011), Jumbo Interactive Ltd & New South Wales Lotteries Corp v Elot, Inc. [2011] APO 82 (28 October 2011), Research Affiliates, LLC [2011] APO 101 (5 December 2011) and Sheng-Ping Fang [2011] APO 102 (20 December 2011).

[2] Invention Pathways Pty Ltd [2010] APO 10 (21 July 2010) at [38].

[3] Invention Pathways Pty Ltd [2010] APO 10 (21 July 2010).