Tensions over computer implemented inventions


Two recent Australian judgments on computer implemented inventions provide contrasting views on what is patent eligible subject matter, as Stuart Irvine and Reginald Leones at Freehills Patent Attorneys explain.

On August 30, 2013, the Federal Court of Australia delivered a judgment concerning  the patentability of computer implemented inventions: RPL Central Pty Ltd v Commissioner of Patents1. In summary, Justice Middleton found that the claims in question, which were directed to a computer implemented method, were patentable subject matter.

Justice Middleton dismissed all arguments put forward by the Commissioner of Patents, holding that:
• a claimed invention must exhibit a “physical effect”;
• physical effects include computer implemented operations such as retrieving, processing, and/or presenting information;
• there is no requirement for a physical effect to be “substantial” or “central” to the purpose or operation of the claimed process;
• operations (eg, processing information) which confer a physical effect need not themselves be new; and
• it is not permissible to strip away claimed features in search of an underlying invention.

Justice Middleton’s reasoning in the RPL decision bodes well for the patentability of computer implemented inventions in Australia. On one view, however, the RPL decision does not appear to sit easily with Australia’s other recent decision on patentable subject matter: Research Affiliates v Commissioner of Patents 2 (also a single judge decision).

The tension between RPL and Research Affiliates is perhaps best reflected by the current approach of the Australian Patent Office, which in a number of cases has adopted the view that computer implemented inventions, such as those considered in the two cases in question, should not be patentable. To this end, at least some patent examiners have recently objected to computer implemented inventions with the explicit statement that the RPL decision is no more authoritative than the Research Affiliates decision, and pending a Full Federal Court decision then the ruling in Research Affiliates will be followed. Request a free trial to read more.

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