A recent shift in the examination practice of the Australian Patent Office may result in certain software related application being rejected for not being patentable.
Generally, Australian Patent Law shows an aversion to ‘pure’ business methods, working directions, mere instructions and the like; these being intangible and incorporeal concepts.
Software related inventions, on the other hand, have previously avoided the above exclusion by showing something ‘concrete’ resulting from the working of the software. Specifically, in the most recent decision on the matter in CCOM v Jiejing1, the Full Federal Court held that:
“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 is in the field of economic endeavour.” (our emphasis)
As such, according to this decision, “a computer, when programmed to achieve any result which has utility in the field of economic endeavour” would be patentable.
However, we have recently noted a departure from the above formulation in the examination practice of the Australian Patent Office in which the Office, in an apparent attempt to prevent applicants from merely ‘tech washing’ business methods, requires that the involvement of a computer be more than a ‘merely incidental’. Specifically, relying on the Australian Patent Office decision in Invention Pathways Pty Ltd2 (2010), the Examiners require that the:
“concrete effect or phenomenon or manifestation or transformation’ referred to must be one 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…”. (our emphasis)
As such, the Australian requirements for patentability of software related inventions have now arguably become more onerous than other jurisdictions whereby even the transformation of data or change in the state of the computer stands to be rejected as being ‘merely incidental’.
While we do not agree with the above formulation, we point out that ultimately the Full Federal Court decision in CCOM v Jiejing holds more weight than the Patent Office decision. Therefore, in our view, we anticipate that the current patent office practice will be appealed to the Federal Court for review, and that there is a reasonable likelihood that the stringent formulation of the Australian Patent Office will be relaxed.
1 28 IPR 481, (1994) AIPC 91-079
2 APO 10