The Australian Patent Office has updated their Patent Manual of Practice and Procedure on 1 February 2016 to include the following signposts to assisting you in determining whether a computer-implemented invention is now patentable.
These signposts draw inspiration from the considerations of the judges in the recent Full Federal Court case of Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 and clearly draw inspiration from the UK courts on interpreting patentable subject matter. These include:
- whether the contribution of the claimed invention is technical in nature;
- whether the invention solves a technical problem;
- whether the invention results in an improvement in the functioning of the computer, irrespective of the data being processed;
- whether the claimed method merely requires generic computer implementation;
- whether the computer is merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
- whether the ingenuity in the invention is in a physical phenomenon in which an artificial effect can be observed rather than in the scheme itself;
- whether the alleged invention lies in the way the method or scheme is carried out in a computer;
- whether the alleged invention lies in more than the generation, presentation or arrangement of intellectual information;
- putting a business method or scheme into a computer is not patentable unless there is an invention in the way the computer carries out the scheme or method;
- it is not determinative that the claimed method can only be implemented in a computing environment;
- the limitation of the claims to other technological environments may not alter the fact that what is claimed is a scheme or abstract idea; or
- if the invention in substance lies in the application of computer technology, or in an improvement in computer technology, it will generally be considered patent eligible.
Consider each of these signposts when considering filing a patent in Australia.
If you have any questions about how the above might affects your current or future patent applications, please contact Raffaele Calabrese at raffaele.calabrese@pof.com.au or Mark Williams at mark.williams@pof.com.au
