03 September 2010

Updates to Software and Business Method Guidance for Australian Examiners

On 1 September 2010, a number of updates to the Australian Patent Office Manual of Practice and Procedure (aka "The Examiners Manual") were published.

These include updates to Sections (relating to computer-implemented inventions) and (relating to business methods) in light of the recent Invention Pathways Pty Ltd decision, on which we reported here.


Computer-Implemented Processes

The update to Section cites paragraph [38] of Invention Pathways, where it was stated that:

…the "concrete effect or phenomenon or manifestation or transformation" referred to must be one 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…
Business Methods

In Section, the above passage of Invention Pathways is also cited, in the context of a requirement that technology be "directly involved" in the creation of a "useful product".  It is not enough, states the new guidance, for "technology to simply carry out the steps of the method."

Additionally, the discussion of business methods refers to paragraphs [40] and [41] of Invention Pathways, where:

...it was said that "Computers and the internet are now as ubiquitous as paper and the postal service as means of collecting, displaying and disseminating information and their use as elements in a business scheme without something more, some substantial physical effect produced in the operation of the method, does not in my view and within the terms of NRDC result in an 'artificial state of affairs' any more than were those actions to be taken on paper…". Clearly (as noted at [43]) using a machine merely as a matter of convenience (and which does not result in a substantive effect) does not result in an application being patentable.

Applicants with claims for computer-implemented methods and/or business methods can expect that Australian examiners will be looking, as before, for a "physical effect" to be brought about by execution of one or more claimed method steps.  However, they will now also require that the physical effect be brought about in a step that is "central to the purpose or operation" of the claimed invention, and not merely some form of commonplace ancillary action, such as input of information, or the display or transmission of results.

This, it seems to us, brings the Australian Patent Office practice even closer to the current position in the US, where "merely" limiting the use of an abstract idea to a particular field of technology, or adding "insignificant post-solution" or "extra-solution" activity, such as output steps or data-gathering steps, is insufficient to confer patentability on an otherwise unpatentable process claim.  This is hardly surprising, given the recent penchant of the Federal Court, and the Delegate in Invention Pathways, to look to recent developments in the US law on patentable subject matter for some degree of guidance or affirmation.


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