Late last year we reported on a decision of the Full Court of the Federal Court of Australia that affects the patentability of computer implemented inventions. In Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177, the Court refused a business method invention.
The judgement left us with no clear test on the patentability of computer implemented inventions, other than the fact that computer implemented business methods are not automatically excluded from patentability. IP Australia has recently updated its Patents Manual to set out the new approach examiners will follow. There is still no clear test. But knowing the approach in advance of examination is helpful.
Manner of manufacture
One of the requirements a patentable invention must satisfy is that it must be a 'manner of manufacture'. IP Australia looks at the principles established by the Courts to assess whether or not an alleged invention qualifies as a 'manner of manufacture'.
IP Australia regards some subject matter as falling outside the definition of 'manner of manufacture'. The excluded subject matter categories include:
- discoveries with no means of putting them into effect
- abstract ideas and mental processes
- mere schemes or plans
- scientific theories
- mathematical algorithms.
IP Australia will assess whether the invention claimed 'as a matter of substance' meets the requirements for a manner of manufacture. Examiners will go beyond the form of the words used. They will look at the invention in the context of the specification as a whole and the relevant common general knowledge.
The substance of the claimed invention
So what would transform an otherwise unpatentable abstract idea, scheme or plan into a patentable invention? What is IP Australia looking for to determine that what is claimed 'as a matter of substance' meets the requirements for a manner of manufacture?
IP Australia has listed several considerations that may be relevant. These include:
- 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 way forward
It's a shame we still don't have a clear test on the patentability of computer implemented inventions. However, the revised Patents Manual does give us an idea of which inventions are likely to encounter problems during examination. And how we should best present them to IP Australia for smoother examination.
