Patent eligibility in Australia of computer-implemented inventions

In recent years, there has in Australia been considerable flux as to what is patentable for computer-implemented inventions. In the Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177, a Full Bench of the Federal Court found that a computer-implemented method (which the court characterised as a ‘business method’ or ‘scheme’) to be unpatentable subject matter under Australia’s ‘manner of manufacture’ standard.

Since that time, IP Australia (Australian Patent Office) has taken a much tougher approach as to what is patentable for computer-implemented inventions.

Other decisions including the Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86, have upheld that tougher approach, by finding that a computer-implemented invention is not patentable if the claimed invention is simply using a computer for its ordinary use. It was also found that if an invention can only be performed with a computer, it does not result in the invention being patentable.

However, in a subsequent decision, Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (Aristocrat), a single judge (Justice Burley) found that the Patent Office had erred in determining that certain electronic gaming machine inventions covered by Innovation patents were simply for game rules, and therefore not patentable subject matter.

The Commissioner of Patents has sought an application to appeal the Aristocrat decision. Should that appeal succeed, we may find IP Australia maintaining its tougher approach as to what is patentable for computer-implemented inventions. However, should it not succeed, we may see “the pendulum swing back” in favour of applicants pursuing protection for computer implemented inventions in Australia.

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