Software patents in Australia

There is no bar against the grant of software patents in Australia, but the patentability of software in Australia has been vigorously contested.

220px-Operating_system_placement.svgIn my experience, IP Australia has a mixed view on the patentability of software. While it will aggressively attack some software patents, it will let others float through examination. I broadly summarise the situation as follows: software that makes a technical contribution is patentable, while software that makes no technical contribution is not patentable. Software that makes some technical contribution may or may not be patentable, depending on how knowledgable your patent attorney is in the software patent space.

For example, software that makes a computer faster may be patentable, but software for ordering a pizza online may not be patentable.  When examining patents, IP Australia looks for a technical solution to a technical problem, as demonstrated by their decision Foxtel Management Pty Ltd v British Broadcasting Corporation. Also of interest is Aristocrat Technologies Australia Pty Limited, where a user interface was considered.

Similarly, the Australian courts have taken the view that not all software implemented inventions are patentable in Australia. The Australian view is now broadly similar to that in Europe.  Here are some important examples, with hyperlinks to more detailed discussions.

Business methods patents

The invention considered in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 117 (“RPL”) related to software on a computer server that remote users interacted with over the Internet. Questions were posed via the Internet using computers to determine if prior learning should be recognised as meeting a recognised standard for a vocational course of study, for example.

Chon-pictureAs such, this is a significant decision because the conclusions should apply to many business methods being created today that similarly involve the Internet and a computer running software. My understanding of the decision, however, is that it does not suggest that inventive new algorithms that improve the function or use of a computer are patent ineligible.

Their Honours where of the view at paragraph 96 that:

A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can be broadly be described as an improvement in computer technology. …  Where the claimed invention is to a computerised business method, the invention must lie in the computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well-known and understood functions. [emphasis added]

RPL continues this theme at paragraph 112:

… it is necessary to understand where the inventiveness or ingenuity is said to lie …. it is apparent that, other than the integers providing that the computer process the criteria to generate corresponding questions and presents those questions to the user, the method does not include any steps that are outside the normal use of a computer. [emphasis added]

Long passages within RPL discuss the lack of any disclosure of, or claim to, a sophisticated algorithm.  This may suggest that claims to more “sophisticated” software may be more likely it is to be found patent eligible.

In light of the RPL decision, Australian patent applications for software and computer implemented inventions must include very detailed descriptions, emphasise sophisticated and new aspects of algorithms, and include non generic computer features in the claims.

Patents for Software combined with non standard hardware 

The invention in Welcome Real-Time SA v Catuity Inc [2001] FCA 445 is in the field of smart cards which record the number of points awarded to a person participating in many loyalty programs.

Generally each merchant has their own loyalty program. Prior to the invention, it was a problem to store information on every available loyalty program in the smart card because the quantity of memory required to store information on all of the loyalty programs available – which may be thousands – generally exceeded the smart card’s memory.

The invention was to add a merchants loyalty program to a file on the smart card the 1st time the cardholder used the card at the merchants point of sale terminal. Consequently, only the loyalty programs that the cardholder participated in were loaded onto the card, greatly reducing the memory requirements.

His Honour was of the view that the invention is a patentable invention.  His Honour expressed the view that the invention produced an artificially created state of affairs, in that the cards can be issued making available to consumers many different loyalty programmes of different traders as well as different programs offered by the same trader. What is involved is not just an abstract idea or method of calculation. Moreover, the result is beneficial in a field of economic endeavour – namely retail trading – because it enables many traders including small traders to use loyalty programs and thereby compete more effectively. His Honour further was of the opinion that the patent is not to a business method, in the sense of a particular method or scheme for carrying on a business. The patent is for a method and a device, involving components such as smartcards and point of sale terminals.

New functions for an existing computer

The invention disclosed by CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168 was to the use of computer technology, for example word processors, to store and retrieve Chinese characters, which are much harder to generate on a computer then alpha numeric characters.

njc5mainTheir Honours found the invention to be a patentable invention.  Their Honours found that contrary to the primary judges decision, following NRDC, the relevant field of economic endeavour is the use of word processing to assemble text in Chinese language characters. The [artificial] end result achieved is the retrieval of graphic representations of design characters, for assembly of text. The mode or manner of obtaining this, which provides particular utility in achieving the end result, is the storage of Chinese characters analysed by type-categories, for search and selection by reference thereto.

Computer graphics

In the judgment International Business Machines Corporation v Commissioner of Patents [1991] FCA 625, the invention by IBM was to computer graphics and more specifically to a method and apparatus for generating curves on computer graphics displays.  This decision is important because it involves software that can run on a general purpose computer.

bezier-curve.png

The invention solved the problem of generating curves on computer displays without perceptible discontinuities, by using a known mathematical algorithm.

His Honour found that the invention is a patentable invention.  His Honour stated that the use of the algorithm is not different conceptually from use of the compounds involved in NRDC. Just as those compounds were previously known, so here, it is not suggested there is anything new about the mathematics of the invention. What is new is the application of the selected mathematical methods to computers. Because application of the algorithm to computers was unknown, and the production of an improved curve is commercially useful and thus in a field of economic endeavour, it was his Honours view that the invention was a manner of manufacture.

There is no bar, as such, to the patentability of software merely because it is for a general purpose computer.

Email me to discuss how I may assist with software patents in Australia and globally.

Justin Blows