Since late 2015, IP Australia has been examining patent applications for computer implemented inventions in light of the Full Court judgment in Commissioner of Patents v RPL Central Pty Ltd (2015) FCAFC 177 (RPL Central), but as of mid-2017, we have seen a new interpretation of this judgement become Patent Office practice.
For better or worse, the law as we knew it relating to computer implemented inventions was settled in December 2015 in the RPL Central decision. RPL Central confirmed that a scheme or idea implemented on a generic computer, using standard software and hardware, is unpatentable. RPL Central also provided a series of signposts to patentability, although not a checklist and not binding, which we reported in 2016.
The RPL Central judgment also made mention of the approach taken in other jurisdictions noting that in the United Kingdom a 4-step test, known as the ‘Aerotel’ test, was used. Although these comments were largely obiter, in mid-2017 the Australian Patent Office updated their manual of practice and procedure to indicate that the ‘Aerotel’ approach was appropriate in determining eligibility of computer implemented inventions under Australian law.
This appears to be an attempt by IP Australia to create law in this area. IP Australia attempted something similar almost ten years ago – where they dictated that a “physical effect must be central to the operation of the computer” for patentability of computer implemented inventions, straying from the Federal Court judgment in Grant v Commissioner of Patents (2006) 154 FCR 62. This was an incorrect position on the law, which was ultimately rectified in RPL Central.
As a result of this change of practice, a number of Australian Patent Office decisions have been issued over the last eight months citing the ‘Aerotel’ test to reject computer implemented inventions.
Two applicants, Rokt Pte Ltd, with an invention related to an engagement offer associated with advertising, and Todd Martin, with an invention related to GPS tracking of athletes, have appealed the Patent Office Decisions regarding the patentability of their computer implemented invention to the Federal Court of Australia. These matters are expected to be heard in mid-2018.
The outcome of these Federal Court cases may determine whether Australia moves to a United Kingdom approach or maintains an approach, which is a combination of Europe and the United States, as per the judgement in RPL Central.