In brief 4 min read
Digital technologies are shaping the future. Yet, in Australia, a series of Federal Court and Australia Patent Office decisions have not upheld the patentability of computer-implemented inventions. It's hoped the High Court's Aristocrat decision will provide greater certainty for software and digital technology businesses.
Software developers, IP portfolio managers, patent attorneys and legal counsel
Digital technologies are transforming the world as we know it. The types of technologies that are shaping the future include software, Internet of things (IoT), blockchain, cloud computing and services, and mobile solutions (to name a few). The different forms of IP that can protect the value in such technologies include confidential information, copyright (which can protect source code as a 'literary work') and patents.
In Australia, for a computer-implemented invention to be patentable subject matter, it must as a matter of substance (not form) involve an advancement to computer technology. Claims that are nothing more than an instruction to carry out a scheme using generic computer technology will not satisfy this requirement.
It appears that the Federal Court has only upheld the patentability of computer-implemented inventions in very few cases.1 One case was in 1991 which concerned a curve drawing algorithm.2 Another case, in 1994, concerned use of an English language keyboard to generate Chinese characters.3 The invention in those cases could be said to involve an improvement to computer technology.
However, there have been more cases where the court has not upheld the patentability of computer-implemented inventions. More recently:
- In Encompass Corporation Pty ltd v Infotrack Pty Ltd  FCAFC 161, the Full Federal Court held that the method for displaying business intelligence information was not patentable subject matter.
- In Commissioner of Patents v Rokt Ltd FCAFC 86, the Full Federal Court overturned the trial decision and held that a digital advertising system arranged to enhance levels of consumer engagement was not patentable subject matter.
- In Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd FCAFC 202 (Aristocrat), the Full Federal Court found that an electronic gaming machine (EGM) requiring the composition of computer code which provided for a particular feature game on the EGM was not patentable subject matter.
- In Repipe Pty Ltd v Commissioner of Patents  FCAFC 223 (Repipe), the Full Federal Court upheld the trial decision and held that a system involving the use of features of GPS-enabled mobile devices to communicate with a central server that handled work, health and safety information was not patentable subject matter.
Interestingly, the court in Aristocrat found that the computer-implemented invention did not involve an advance to computer technology but rather it only involved the use of a computer. This is because the person designing the EGM was left do to the programming giving effect to games. The court said that claim 1 was 'silent on the topic of computer technology beyond that the person implementing the invention should use some'.
Further, the court in Repipe had no difficulty in accepting that the invention was useful and represented a clever use of mobile devices and a server. However, it was unable to see how it constituted an advance in computer technology. Rather the purpose of the claimed invention the court said was to solve a problem in the field of business operations, specifically the management of work, health and safety information.
Whilst we await a High Court decision, the Australian Patent Office has recently handed down a series of decisions where patent applications claiming computer-implemented inventions have not proceeded to grant because the claimed inventions have found not to be a manner of manufacture. Specifically, the Delegate found that each of the following inventions was not patentable subject matter:
- a method for undertaking system/error analysis in computer-based systems used to carry out a process.4
- a scheme of generating program code based on metadata to analyse clinical data and create artefacts (for example, reports).5
- methods of re-configuring a tour of a facility, based on certain events that may occur and/or preferences of a user regarding the tour, and which used a variety of computer-based systems and sensors.6
- a method for managing accumulated value with block chain technology for insurance providers.7
In each decision, the Delegate found that the claimed invention was implemented on generic computer technology and did not involve an improvement to such technology. Interestingly, in the last decision listed, the Delegate said that blockchain per se could be considered an improvement to computer technology but the present invention was limited to blockchain implementation and was not an improvement in the blockchain itself.
The future involves an explosion of digital technologies. Yet the number of patents with an objection from the patent examiner because they did not meet the 'manner of manufacture' test has increased.8
The position in Australia on the patentability of computer-implemented inventions is out of step with the United States and Europe. It is hoped that the High Court decision of Aristocrat will provide greater certainty for software owners and software/digital technology businesses.
See Repipe Pty Ltd v Commissioner of Patents  FCAFC 223 at  per Perram J.
International Business Machines Corporation v Commissioner of Patents  FCA 625.
CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260.
Accenture Global Solutions Limited  APO 18 (24 March 2022).
Accenture Global Solutions Limited [2022[ APO 19 (25 March 2022).
Accenture Global Solutions Limited  APO 22 (29 March 2022).
Accenture Global Solutions Limited  APO 23 (29 March 2022).
'Intellectual Property Arrangements', Productivity Commission Inquiry Report (23 September 2016), p 271.