IP Australia Updates Practice Note on Patentability of Software

Following recent Full Federal Court decisions IP Australia has updated its practice note on the patentability of software or computer implemented methods...

Following the Full Federal Court’s decision in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 IP Australia has updated its practice note on the patentability of software or computer implemented methods. In determining whether such proposed inventions meet the requirements for patentability of being a manner of manufacture which is not a mere scheme, abstract idea or mere information, the following factors should be considered in the context of the specification as a whole and the relevant common general knowledge:

• whether the contribution of the claimed invention is technical in nature.
• whether the invention solves a technical problem within the computer or outside the computer or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
• whether the claimed method merely requires generic computer implementation.
• whether the computer is merely an intermediary or tool for performing the method while adding nothing of substance to the idea.
• whether the ingenuity in the invention is in a physical phenomenon in which an artificial effect can be observed rather than in the scheme itself.
• whether the alleged invention lies in the way the method or scheme is carried out in a computer.
• whether the alleged invention lies in more than the generation, presentation or arrangement of intellectual information.

The practice note also indicates that the following factors are not determinative of patentability:

• that the claimed method can only be implemented in a computing environment.
• limitation of the claims to other technological environments when what is claimed is a scheme or abstract idea.

Author: Quinn Miller

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