Following on from recent Patent Office success in court in
rejecting Business Method Patents, the Patent Office has released
new guidelines on the patentability of computer implemented
Whilst the court authorities are presently on appeal, the Office
is proceeding to issue the guidelines to align practices with their
preferred position, which was adopted by a recent Full Federal
Court decision. The new guidelines appear to centralise power with
the Office in adopting an approach that the Office will 'go
beyond the form of words used'. The Office will be allowed to
allege the 'substance of the alleged invention' is a scheme
even where the claims define a physical product.
The list of factors the Office will take into account are many
and varied, and appear to leave a wide discretion to the Office, in
the rejection or acceptance of Patent applications. Factors include
whether the 'contribution' is technical in nature. Whether
the method 'merely requires a generic computer
implementation'. The factors appear to be driven by the
Office's desire not to consider business method innovations as
worthy of protection. No consideration of the need to protect this
area of innovation appears to have been given. There also appears
little chance of legislative amendment in the foreseeable
Overall, there is a necessity for applicants to carefully
consider the drafting of their patent applications in order to
minimise the opportunities for the Office to reject an
applicant's innovative endeavours as being too 'business
method' in nature. Through careful drafting, applicants may be
able to negate the Office's wide discretion.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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leading Intellectual Property firms in 2015.
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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