The Australian Federal Court of Appeal recently heard two
separate appeals, Research Affiliates v Commissioner of Patents and
RPL Central Pty v Myall Australia, on decisions by IP Australia not
to grant patents for computer-implemented inventions in
IP Australia has granted patents for computer-implemented
inventions for over two decades. Post-Bilski, however, a policy
change at IP Australia has led to a growing body of hearing
decisions that have repeatedly rejected the patentability of
computer-implemented inventions in Australia and introduced
significant uncertainty.1 IP Australia argues for an invention to be
patentable, the claims need to define some effect, phenomenon,
manifestation or transformation 'that is significant both in
that it is concrete but also that it is central to the purpose or
operation of the claimed process or otherwise arises from the
combination of steps of the method in a substantial way'.2
Research Affiliates and RPL Central Pty are the first judicial
challenges to IP Australia's stance on the patentability of
computer-implemented inventions. Hopefully the Court will take
these opportunities to provide some much-needed guidance for both
administrators and users of the patent system.
Research Affiliates v Commissioner of
Research Affiliates was heard by Federal Court Justice Middleton
in Sydney on 21 November 2012. Research Affiliates appealed against
two hearing decisions in which IP Australia refused to grant
patents for two related applications based on IP Australia's
own earlier Invention Pathways3 decision. Both
of Research Affiliates' applications relate to the construction
and use of passive portfolios and indexes for investments in
securities. The applications include method, system and machine
readable medium claims.
RPL Central Pty v Myall Australia
RPL Central Pty was heard by Federal Court Justice Emmett in
Melbourne on 7 December 2012. RPL Central appealed against a
decision of IP Australia not to allow claims relating to a method
and system for a Recognition of Prior Learning (RPL) programme for
identifying qualifications individuals may be entitled to.
The RPL Central Pty appeal follows an opposition hearing that
was interesting because the Deputy Commissioner of Patents took on
an inquisitorial role. The sole ground pleaded by the opponent
(Myall Australia) was that the claimed invention lacked novelty. A
few weeks before the hearing, however, the Deputy Commissioner took
the unusual step of asking the parties to prepare additional
submissions on a further possible ground not raised by the opponent
- whether the claims related to a 'manner of manufacture'
(patent-eligible subject matter). The opponent was successful in
opposing the grant of a patent, but only on the ground first raised
by the Deputy Commissioner shortly before the hearing.
Decisions from both of the Federal Court appeals have been
reserved and are expected to issue in about two-three months.
This decision clarifies the Australian test for distinctiveness of trade marks and the treatment of foreign word marks.
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