A Divergence in Opinions on Software Inventions


Recent court decisions in the U.S. and Australia seem to indicate a divergence of opinions regarding software inventions between the two countries.  In Australia, the Federal Court recently determined that where “the computer is a substantial, central or integral part of each claim,” that such would satisfy the manner of manufacture requirement (patentable subject matter) under Australian law (RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871 (para 156)(30 August 2013).)  In the U.S., a recent decision by the Federal Circuit has held that “simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does into transform a patent-ineligible claim into a patent-eligible one.” (Accenture Global Service v Guidewire Software, Inc., 2011-1486 at 15 (Fed. Cir. September 5, 2013).)

The tendency by some courts in the U.S. is to look past the computer-implemented aspect of the invention and see whether the claim recites “meaningful limitations.”  The danger in this is that the test is very subjective and may lead to inconsistent results.  This is already occurring in the U.S. Fortunately, the judge in RPL Central Pty Ltd v Commissioner of Patents noted the decisions of the U.S. courts and decided that those decisions are “merely persuasive,” but that it is the “principles established in the Australian decisions” which must be followed. (RPL Central Pty Ltd v Commissioner of Patents, at para 155.)

From recent decisions in Australia and the U.S., it appears that Australia accepts the patentability of software inventions where the computer plays a central role, while in the U.S., “meaningful limitations” must be added (whatever that is).

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