On 1 February 2016, the Australian Patent Office released new guidelines1 for assessing whether computer-related inventions relate to patentable subject matter. The guidelines were released following the Full Federal Court decision in Commissioner of Patents v. RPL Central Pty Ltd [2015] FCAFC 177 (RPL decision).
These considerations are as follows:
- whether the contribution of the claimed invention is technical in nature.
- whether the invention solves a technical problem within the computer or outside the computer or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
- whether the claimed method merely requires generic computer implementation.
- whether the computer is merely an intermediary or tool for performing the method while adding nothing of substance to the idea.
- whether the ingenuity in the invention is in a physical phenomenon in which an artificial effect can be observed rather than in the scheme itself.
- whether the alleged invention lies in the way the method or scheme is carried out in a computer.
- whether the alleged invention lies in more than the generation, presentation or arrangement of intellectual information.
The fifth consideration is based on the Australian High Court (the highest court in Australia) decision in National Research Development Corporation v Commissioner of Patents (1959) 1A IPR 63, the root of present patentable subject matter considerations in Australia. This consideration must be answered with a “yes”.
The first four considerations are the tests stated in the RPL decision. It appears to the authors that the sixth and seventh considerations are simply extensions of the first or second consideration. Answering “yes” to the first, second, sixth and seventh considerations, and “no” to the third and fourth considerations, point to a computer-related invention being patentable subject matter.
There are no concrete guidelines as to the meaning of the term “technical” referred to in the first and second considerations. The Patent Office provides the following two examples to show claims that were considered to be not patentable subject matter.
The first example is a method claim for presenting internet advertising based on weighting certain aspects of a user’s browser history. Despite the application and utility of the method claim being limited to the internet, the Patent Office considered the method claim did not solve a “technical” problem or provide a contribution that was “technical” in nature.
The second example is a method of extracting oil from a well characterised by a computer implemented method to allocate pumping resources according to customer demand. The Patent Office considered the method to be a scheme despite the method claim being notionally tied to a technical activity of controlling pump. In our opinion, the controlling of the pump based on customer demand was the reason the Patent Office considered the method to be a mere scheme.
The Patent Office also provides two examples of computer related inventions meeting the “technical” aspect. Those examples are: (1) a claim directed to computer processing apparatus for assembling text in Chinese language characters (CCOM v Jiejing 28 IPR 481; (1994) AIPC 91-079) and (2) a claim directed to the production of an improved curve image by computer (International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR 218). The Patent Office noted that the substance of both inventions lies in the application of computer technology (i.e., a technical solution to a technical problem) or in an improvement in computer technology.
It therefore appears that providing a “technical problem” that a claimed invention solves or a “technical” aspect of the contribution of a claimed invention would be important in convincing an Examiner that a computer related invention relates to patentable subject matter.
1 Patent Manual of Practice & Procedure, section 2.9.2.7 (accessed at http://www.ipaustralia.gov.au/pdfs/patentsmanual/WebHelp/Patent_Examiners_Manual.htm on 31 March 2016)