Recent dicta clarify the patent-eligibility of software, and broaden the range of software that may be considered patentable, under Australian law.
Australian law has long required an “artificially created state of affairs which is of utility in practical affairs and whose significance thus is economic” for an alleged invention to be patentable. Case law has suggested this requirement may be satisfied by a “change in state or information in a part of a machine”. Nonetheless debate continued as to the position, under our law, of software configured to implement a method that would be unpatentable if implemented manually.
In this context, the Australian Patent Office developed practices of:
- giving little weight to “computer aspects” of a claim and looking to the underlying method when assessing patentability; and
- requiring a physical effect 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”.
Recent case law firmly rejects both notions. In RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871 (RPL), Middleton J directly addresses 1 and 2 above with:
- “One should not subtract from the invention any aspect of computer implementation, and then determine whether what remains is the proper subject matter of letters patent” (at paragraph 157); and
- “Nor do I accept the Commissioner’s submission that [requirement 2] is merely the function of the application of [the relevant Australian Authorities] ‘as properly understood’” (at paragraph 147).
The rejection of 2 is arguably non-binding since his Honour also found that in this case “[t]he computer is a substantial, central or integral part of each claim”. One the other hand, his Honour’s rejection is framed in terms of the interpretation of the earlier authorities. We therefore expect the Patent Office now to follow that interpretation.
We hope to see a significant shift in the practices of the Australian Patent Office regarding software. In particular, objections that overlook that a claim is limited to computer implementation will hopefully no longer be raised.
RPL issued shortly after another decision assessing the patent-eligibility of software, Research Affiliates LLC v Commissioner of Patents [2013] FCA 329 (“Research Affiliates”), in which a different conclusion was reached. A comparison of the two cases provides practical guidance on Australian software patentability for patent attorneys.
