The past few years have presented a number of challenges to applicants of business method and software patents in Australia. Shelston IP has been taking a special interest in developments, given our involvement in an upcoming appeal of Research Affiliates, the first Federal Court proceedings brought to challenge restrictive patentability thresholds of the Australian Patent Office.
Since 2010, the Australian Patent Office has embarked on something of a crusade against software and business method patents. A string of Patent Office decisions made it extremely challenging to obtain protection for inventions where the technology was perceived as being "business related" (as opposed to being traditionally scientific in nature). A preliminary decision in Research Affiliates(currently under appeal), did not provide much in the way of substantive judicial reasoning. However, a recent Federal Court decision in RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871 has altered the landscape dramatically. In RPL, Justice Middleton turned the tables on the Patent Office's recent approach and provided a clear explanation about the evolution of the law, together with detailed reasoning about how the law was to be correctly applied.
The RPL decision is unequivocally supportive of the long standing approach of Australian courts to apply a broad and open interpretation to patentability:
By starting from this understanding of the fundamental principles of patentability, Middleton J considered (and then unequivocally rejected) various aspects of the Commissioner's current position. For example, as to the Commissioner's supposition that a change in information in a computer is insufficient to constitute an invention, Middleton J noted:
As to the Commissioner's argument that there is to be imputed a "substantiality" requirement in the context of physical effect, his Honour comments:
Finally, in relation to the Commissioner's attempts to construe claims by first ignoring aspects of computer implementation, and then considering the "essence" of what remains, Middleton J went to some lengths to discredit such an approach:
These lines of jurisprudential reasoning might be seen as a rejection of the Commissioner's reasoning by which so many patent applications have been refused. This hopefully earmarks a return to patentability thresholds during patent examination in Australia that are more consistent with the established law.
This is by no means the end of the saga. An appeal of the Research Affiliates decision will be heard by three Federal Court judges in November. Those many patent applicants with computer-implemented inventions that have had to bear the cost of the more recent examination practices of IP Australia will be encouraged to learn that Justice Middleton is among those three judges.
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