12 July 2016

Last year the Full Federal Court issued its decision in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (11 December 2015) (RPL), finding that an online method for collecting evidence of skills and knowledge to meet a recognised qualification standard was not patentable. The Court clarified principles to be applied to computer implemented business methods and related subject matter.

Improving our patent examination process

In response to the decision, we have updated our patent examination manual and conducted training with our patent examiners to seek to provide a more consistent understanding of the law and how it should be applied.

This training has included examiners who are directly responsible applications that relate to business methods and computer software as well as those in other areas including chemistry, biotechnology and pharmaceuticals where computer implemented methods also arise.

We will continue to monitor examination consistency through our quality review system to ensure our guidance and training of examiners is effective.

Manner of manufacture, business methods and computer software

Not every innovation can be patented. In addition to specific exclusions in the Patents Act 1990 (eg human beings), something can only be patented if it is a Manner of Manufacture. This is a legal term used to distinguish types of inventions that are eligible to be patented from those that are not and has been interpreted through decisions of the High Court and Federal Court of Australia.

From the RPL decision and other cases, financial, business or other schemes, abstract ideas and mere information, as such, are excluded. Furthermore the implementation of a scheme or presentation of information using a computer or the internet may also not be patentable, whether claimed as a method, a software product or app or a system.

However many computer related inventions remain eligible. For example where the invention is an improvement to the operation of computers or concerns a technical solution to the implementation of a business process by computer. To determine whether your invention qualifies you may need to seek professional advice from a registered patent attorney.

More information