Test for Patentability of Software in Australia

To summarise, the Court essentially held that the invention claimed concerned no more than mere computer automation of a method that was itself not patent-eligible. As a result of the Court’s approach to this case, the broader issue of patentability for CIIs or software-type inventions generally in Australia has not received the clarity hoped for from this decision, and the Federal Court has also not yet addressed the problems created by the current practice of IP Australia in this area. We remain hopeful, however, that there will be greater clarity in this important area of innovation in the not- too-distant future. Firstly, there may still be an appeal to the High Court of Australia in this case which could yet address these matters. Secondly, the next appeal to the Full Court of the Federal Court on the issue of patentability of a CII in Australia is already pending. In that case, the primary judge upheld the patent largely based on expert evidence (not usually contested on appeal) and the position of the Commissioner of Patents was soundly rejected. So, this area of patent law remains in a state of flux in Australia and we shall report on developments as they occur. For astute and experienced practitioners, this decision of the Federal Court provides some interesting hints for drafting and prosecution strategies to enhance the prospects of patent grant for CIIs. The Engineering and ICT team at Wrays advises market-leaders on the protection of their innovations in this area. Does this judgement of an enlarged Full Bench of the Federal Court of Australia affect your business? If you would like more information about the potential implications of the decision made, please contact our IP Specialists at wrays@wrays.com.au

during the appeal hearing that the Full Bench of non- technically trained judges struggled to grasp and understand this notion, as paragraphs [100] and [101] of the decision appear to confirm: In oral submissions, the appellants sought to make much of the fact (if it be a fact) that the claimed method cannot be implemented using “generic software”. The difficulty with this submission is that the claims in suit do not secure, as an essential feature of the invention, any particular software or programming that would carry out the method. It is left entirely to those wishing to use the method to devise, and then to implement, a suitable computer program for that purpose. As we have said, all that the specification teaches is that the processing system be “suitably programmed”. As the oral argument developed during the appeal, the appellants submitted that the claimed method is, itself, a high-level description of a computer program. We do not accept this characterisation. If approached from this point of view, the method is really an idea for a computer program, it being left (as we have said) to the user to carry out that idea in an electronic processing device. …. Patentable subject matter is not provided simply because the method is a “method … in an electronic processing device”, which itself is not characterised. To find otherwise would be to elevate form over substance. In assessing the analysis and findings of the primary judge in this appeal, the Full Court did acknowledge that some statements made by the primary judge may have used language suggesting that other conceptually distinct elements of patentability might have intruded into his Honour’s consideration. However, the Court saw no error in the ultimate conclusion of the primary judge, noting in paragraph [110]: The primary judge was simply directing his mind to whether the claimed invention was something more than mere “generic computer implementation” of an otherwise abstract idea.

PHILIP GEHRIG Principal T +61 3 8415 6503 philip.gehrig@wrays.com.au

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