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Author: Ian Lindsay

Can I patent my app?

Can I patent my app?

Update 21 December 2015 – refer to Australian computer implemented invention crashes

Can and should you patent your app? Google Play and Apple’s App store have made “app” an everyday word, so it is understandably an important area for many entrepreneurs. As with any new venture, the question of how to corner the market comes up and, quite often, “can I patent my app”?

How do you know if your new app is patentable? Isn’t there an app for that? Unfortunately, not one that I am aware of. Generalising a little, an app is patentable as long as it is new, varies from earlier apps or other solutions in a non-obvious way, and is not just the implementation of an abstract idea embodied in an app.

The rules for patenting any invention vary slightly in different countries around the world. For example, the US and Australia are more permissive to “software patents” than Europe, which requires any “software patent” to have some kind of technical interaction. An example of an app which would generally be considered patentable in most countries, assuming it was new and non-obvious, would be one which uses multiple devices GPS positions to solve some sort of geospatial problem. The fact that a system uses real world measurements, such as a device’s position, generally takes an invention beyond simply being a “software” invention, even if the hardware used to take the measurements is well known.

With this in mind, we can determine whether your new and amazing app is patentable by answering a few questions and considering the resulting answers. The flow diagram shown below summarises the questions but a little more detail is provided below.

If you decide that the answer is “no” based on these questions, don’t be put off approaching a patent attorney anyway, just in case you have a particularly unusual case! Most patent attorneys don’t charge for an initial chat on the phone.

1. Is your app functionally new? Does it perform a new function, or function in a new manner (even to obtain an old result)?

This is a question which may not be easy to answer straight away and a little guidance as to how to answer it is required. But that is often the case for any invention, whether embodied in an app or not.

The question should be answered based on your knowledge at the moment with regard to anything that has been made public in any country around the world. That is, has anyone else in the world developed a system which performs the same functions as my app? It is relatively rare that an invention exists where the functions an app performs are identical to previous apps or systems, just in a new area or with new information. Note that we are not asking if there is another app with the same functionality – the question is whether your app is functionally new. So, any system which performs the same functions could be a potential issue, not just apps.

As suggested above, achieving the same result as previous systems but in a new way is generally patentable. The new way may have particular advantages that previous ways do not.

If the answer is “yes”, great, move on to question 2.

If the answer is “yes, the other app has a really poor UI, so ours is going to sell way more”, then you have a marketing and usability advantage but, in the context of this question, your app is unlikely to be functionally new.

If the answer is “no”, then the likelihood is your app is not patentable. However, there are exceptions. For example, if a UI has an effect beyond the normal organisation of information, such as reducing eye strain, the UI may be patentable in itself.

2. Does your app interact with the physical world?

What we’re looking for here is interaction such as input from a user, getting data from a motion sensor in a smartphone, receiving GPS information, etc. An app that simply processes information, or is the implementation of an abstract idea, is less likely to be patentable.

Interaction can come in many ways, of course: Apple owns a patent to the “swipe to unlock” feature on iPhones in the US, Australia and Europe (amongst other countries). Therefore, new input arrangements, clever use of device sensors and even a new type of UI (as mentioned above), can be patentable where there is some particular advantage and, particularly, a technical advantage.

3. If the answer is “no” to question 2, does the app provide a previously unknown advantage, preferably “technical” in nature, which is more than just related to the presentation of information?

If you’ve answered “yes”, you probably fall into a category of “potentially” patentable apps. Your app may be patentable in some countries, such as the US or Australia, but not in others. Having protection in the US, which is more permissive to “software” based inventions, may be sufficient for your purposes.

If you’ve answered “no”, it is relatively safe to say that your app is not patentable. But don’t let that put you off pursuing development – design and marketability are often just as important as monopolising features.

4. If the answer is “yes” to question 2, does that interaction, or the ultimate result of that interaction, result in some sort of improved or alternative outcome?

If you’ve answered yes to questions 1, 2 and 4, you most likely have a patentable app. Congratulations!

Now, seek some professional advice to ensure that your app is protected properly. As Red Adair said “If you think it’s expensive to hire a professional to do the job, wait until you hire an amateur”. More information on what is involved in patenting your idea can be found on our “How to patent” page.

Raising the Innovative Step

Raising the Innovative Step

The Advisory Council on Intellectual Property (ACIP) were tasked, back in 2011, to look at the effectiveness of the innovation patent system in stimulating innovation by Australian SMEs. They have recently issued their final report on the matter.

The final report includes a number of “key” recommendations including:

  • a modified innovative step threshold – being below the inventiveness required for inventive step but above that of the current innovative step;
  • uncertified innovation patents should be called innovation patent applications, to avoid confusion;
  • require certification of an innovation patent by its 3rd anniversary of filing; and
  • exclude all methods, processes or systems from being patentable inventions for the innovation patent system.

The Australian Government is, apparently, considering its response to the Report. It is not expected that these changes will be made any time soon, but they certainly represent a significant change from current practice. Additional detail on the key recommendations is provided below.

Modified Innovative Step

The report has recommended a modified innovative step, above that of the current threshold. The reports suggestion is to use the test for inventiveness as set out in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 but modified such that the common general knowledge (CGK) used is the current definition of CGK.

The current standard of innovative step requires that a patent claim, when considered by a person skilled in the relevant art, in the light of the CGK as it existed in the patent area before the priority date of the relevant claim, varies from any piece of prior art, or pieces of prior art that a person skilled in the relevant art would treat as a single source of information, in ways that make no substantial contribution to the working of the invention.

The recommended standard of innovative step requires that a patent claim would have been obvious to a non-inventive skilled worker in the field in the light of the CGK at the time of the priority date of the relevant claim (CGK both in and out of Australia).

The current standard of inventive step requires that a patent claim would have been obvious to a non-inventive skilled worker in the field in the light of the CGK in combination with any piece of prior art, or pieces of prior art that a person skilled in the relevant art could be reasonably expected to have combined, at the time of the priority date of the relevant claim.

Whether the recommended standard of innovative step would succeed in creating a “robust and enforceable intellectual property right”, over and above what is currently available, only time will tell.

Renaming Innovation Patents

This is a relatively simple but, potentially, effective recommendation. Especially in the light of the numerous Chinese originating innovation patents that are been filed, apparently due to an incentive from the Chinese government for companies that have “granted” patent rights.

Requiring Certification within 3 years

Only 47% of innovation patents are renewed beyond 3 years and, therefore, the report believes that a recommendation to require certification within 3 years is appropriate to increase certainty in patent rights. They have also recommended that a fee for searching should be considered.

As the innovation patent is only 8 years in length, 3 years is a relatively significant proportion. However, it is unlikely that this will deter innovation patent filings.

Exclude all methods, processes or systems from being patentable inventions

Other jurisdiction which have “short form” patents, such as utility models, often have restrictions on what can be protected. Australia is unusual in that its short term and long term (innovation and standard) patents have very similar patentable subject matter requirements, the sole difference being that plants and animals, and the biological processes for the generation of plants and animals, cannot be validly claimed in an innovation patent.

The report, effectively, recommends bringing the Innovation patent in line with other jurisdictions. It seems that significant pressure from, in particular, the software industry has convinced the ACIP that protection of methods, processes or systems undermines innovation in that sector.

Further reading

Australian Trade Mark Opposition Extensions of Time: A Review

Australian Trade Mark Opposition Extensions of Time: A Review – 6 June 2014

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) came into force on 15 April 2013 and updated the Trade Marks Act 1995 and the Trade Marks Regulations 1995, including amendments to the procedures relating to oppositions. As we noted in our article Patent Opposition Extensions of Time: A Review – 24 April 2014, it was plain to those who regularly deal with oppositions that the changes to the extension of time provisions for filing evidence were always going to lead to dispute.

Recap – the Old Law

Prior to 15 April 2013, IP Australia (which incorporates both the Patent Office and the Trade Marks Office) had to be reasonably satisfied an extension of time “is appropriate in all the circumstances”. Case law dictated that only basic reasons were required to obtain an extension and therefore it was common to obtain extensions. Often two or three (three month) extensions were obtained, meaning oppositions often took years to resolve.

Recap – the New Law

The intention of the new law, with respect to opposition proceedings, is to “reduce delays” and “introduce a more rigorous test for granting extensions of time to file evidence” [1]. Regulations 5.15(2) and 9.18(2) of the Trade Marks Regulations 1995 (as amended on 15 April 2013) provide that:

(2) The Registrar may extend the period only if the Registrar is satisfied that:

(a) the party:

(i) has made all reasonable efforts to comply with all relevant filing requirements of this Part [the Part being opposition proceedings]; and

(ii) despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so; or

(b) there are exceptional circumstances that justify the extension.

[emphasis added]

Implementation under the New Law

The first contested decision dealing with trade mark opposition evidence extensions of time under the new law (as it applies after 15 April 2013) is MG Icon LLC v Caprice Australia Pty Ltd [2014] ATMO 34 (30 April 2014)(“MG Icon”) in relation to registration no. 901355 MATERIAL GIRL in class 25. The extension request was refused.

The decision applies Regulation 9.18(2) (opposition to application for removal for non-use), which is in identical terms to Regulation 5.15(2) (opposition to registration). Thus it is relevant to any trade mark opposition evidence extension of time case. Regulations 9.18(2) and 5.15(2) are also in identical terms to the equivalent Australian Patent Regulations.

The evidence supporting the extension request was filed in multiple steps, and the Delegate discusses these separately and in detail, making the decision useful for assessing the likelihood that a given extension request might be refused.

Patent Office decisions issued thus far, taken together with the consistent approach by the Trade Marks Office in MG Icon, provide clear guidelines (for both patent and trade marks opposition cases) on interpreting the wording of the new provisions, the required timeliness and diligence of actions taken by the party seeking the extension, and the level of documentation required to obtain an extension.

Brief case summary – MG Icon LLC v Caprice Australia Pty Ltd [2014] ATMO 34 (30 April 2014)

The non-use removal applicant, MG Icon LLC, is part owned by Madonna, aka MATERIAL GIRL. However, the non-use opponent and current owner of registration no. 901355 MATERIAL GIRL in class 25 is Caprice Australia Pty Ltd. Caprice sought leave for an extension of time to file its evidence in reply, being the first evidence period commenced under the new law for this opposition. The Trade Marks Office initially proposed to grant the extension, but after a contested hearing the extension request was refused, the Delegate not being satisfied that there were exceptional circumstances, nor that the extension applicant had acted promptly and diligently at all times during the period [2].

This decision is consistent with Patent Office decisions issued to date on extensions of time for filing evidence under the new law, citing [3] the Patent Office’s decision in Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 (“TRED”) and specifically the test formulated in TRED at [34] to [35].

A Delegate of the Registrar issued a notice of intention to refuse the original extension request made on 14 November 2013, allowing 14 days for further reasons supporting the request to be filed. The further reasons/evidence were filed 4 December 2013 (referred to in the decision as the “initial evidence”) and the Delegate issued a notice of intention to grant the extension. MG Icon LLC objected to the extension, applying for a hearing. The hearing was held on 5 February 2014 and subsequently, on 18 February 2014, additional evidence supporting the extension request was filed (“the subsequent evidence”).

The initial evidence consisted of a declaration by Caprice’s attorney. The subsequent evidence consisted of two attorney declarations and a declaration by a Director of Caprice.

The initial evidence did not provide sufficient explanation of the questions it raised [4]. The subsequent evidence “provides a far more comprehensive explanation of events and circumstances during the period for evidence in reply” [5], although it did not establish prompt and diligent conduct at all times. An inference may be drawn that, had the facts of the case been different, the subsequent evidence was sufficiently detailed it may have allowed the Delegate to be satisfied that the party had acted promptly and diligently at all times to ensure the filing of the evidence within the period, but was unable to do so.

Extension of Time Factors and Key Points

  • The grant of an extension of time is discretionary. The Commissioner or Registrar may grant an extension, not must grant an extension, if satisfied.
  • Notably, under 2(a)(i) failure to make “all reasonable efforts to comply with all relevant filing requirements”, at any stage during the opposition process, may affect the ability to obtain an extension of time to a period in which it is possible to demonstrate that the party has acted promptly and diligently at all times.
  • 2(a)(ii) has thus far been consistently interpreted to associate “within the period” with the requirement to act promptly and diligently, i.e. interpreted as a requirement for promptness and diligence at all times within the period sought to be extended, which is a lesser requirement than the alternative – to act promptly and diligently at all times (i.e. at any time including before commencement of the period) in order to ensure that the evidence is filed within the period.
  • Thus the extension applicant needs to address different time periods for each leg of the test under (2)(a), and succeed with both legs.
  • The public interest is irrelevant unless the Commissioner or Registrar’s discretion is first enlivened under either 2(a) or 2(b) [6].

Reasonable Efforts – 2(a)(i)

  • Making “all reasonable efforts to comply with all relevant filing requirements” is considered over the period of the whole opposition process, not just the evidentiary period in question [7].
  • Detailed submissions as to the actions taken to date and, particularly, the period in question must be furnished.
  • “[I]t is necessary to understand the actions that they have taken (for instance, what was done, when it was done, how it was done, and by whom it was done) covering at least the period in question, and the nature of the evidence that they are preparing” [8].
  • However, the fact that a party met each of its filing deadlines up to the period in question may be sufficient to show “all reasonable efforts to comply with all relevant filing requirements” as regards the conduct of the opposition prior to the period sought to be extended [9].
  • Relying on one person, whether that it is the expert or the patent attorney, is not necessarily sufficient: efforts must be made to seek an alternative or explain why that person is not replaceable [10].

Acting Promptly and Diligently – 2(a)(ii)

  • Consideration of the whole evidentiary period, not just any extended period, of the current phase of the opposition is relevant, when considering whether the party has acted promptly and diligently “at all times” [11] within the period.
  • “At all times” is a key aspect – there must be no significant gaps in the timeline [12].
  • The test may be applied in relation to each of the declarations for which an extension of time is sought and the actions or otherwise of the attorney and each of the declarants or other individuals involved may be separately considered [13]. Thus it appears possible that an extension for one declaration could granted under 2(a) yet refused for another.
  • Notably, the issues of “making all reasonable efforts” and “acting promptly and diligently” are often considered to be one and the same [14].
  • An expert’s involvement in other opposition matters can be a relevant factor when considering whether the party has acted promptly and diligently, but evidence must be provided to demonstrate the effort required to be allocated to any alternative tasks and their urgency [15].
  • Suspending work due to settlement negotiations, or waiting for the outcome of other processes, does not constitute acting promptly and diligently [12], [15].
  • The failure by a party to follow up with its attorney when expected information was not received (due to email issues and regardless of other circumstances) is not prompt and diligent conduct [16].
  • Annual leave is generally not unforeseen and does not excuse lateness [17].
  • Failure by a party to advise its attorney that the business was sold for more than a month post-sale, and subsequent stalling of the evidence preparation process, is not prompt and diligent conduct [17].
  • Leaving finalisation of evidence to the day before the deadline is “very late in the period”, allowing little time to deal with contingencies (such as a witness delaying return of the declaration) [18].
  • Actions taken after the deadline cannot contribute to establishing prompt and diligent action to ensure filing within the period, no matter how well documented and evidenced [19].

Exceptional Circumstances – 2(b)

  • The only decision which has concluded that “exceptional circumstance” warranted the extension of time was a “stay” of the opposition proceedings by IP Australia [20]. No decisions have concluded that circumstances put forward by the relevant party have constituted “exceptional circumstances”.
  • Situations which would be regarded as exceptional circumstances include “matters outside the normal evidentiary process and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence” [21].
  • There appear to be obiter comments suggesting that a change in circumstances of an expert may constitute exceptional circumstances, such as unexpected leave or work commitments [22].
  • Exceptional circumstances are not: the new amendments to the Regulations (applicable to evidence periods of both parties) [23]; inequity or breach of natural justice due to the different evidence periods available or actually used by each party, caused by timing of the new amendments to the Regulations [24]; an assertion that the acceptance of the application is in error [25]; the request of an applicant for further and better particulars [26]; holidays of an expert, where they were known well in advance of the deadline [27]; documents in evidence in support that were not particularised in the Statements of Grounds and Particulars [28]; procedural fairness [29]; the Melbourne Spring Racing Carnival! [30]; sale of a business three months before the extension was sought, taken alone or in combination with other factors [31].

Summary

Overall, the application of the extension of time provisions by IP Australia is not surprising for those who attended any of the IP Australia workshops prior to the current law coming into force on 15 April 2013. It was fully expected that engaging experts at an early stage and otherwise ensuring that the opposition process never appears to “grind to a halt” would be required if an extension of time was ever going to be allowed. As such, IP Australia’s goal of increasing procedural efficiency with respect to oppositions is being achieved.

The question is whether the changes in the procedures actually correspond with the separate goal of “raising the bar”. Whilst opposition procedure clearly needed some attention, the results of the extension of time provisions are more likely to “lower” the bar, certainly in oppositions by limiting the timeframe for opponents.

Related topics


[1] EXPLANATORY STATEMENT: Intellectual Property Legislation Amendment (Raising the Bar)

Regulation 2013 (No. 1)

[2] MG Icon LLC v Caprice Australia Pty Ltd [2014] ATMO 34 at [54]

[3] MG Iconat [15] to [17]

[4] MG Icon at [39] to [41]

[5] MG Icon at [45]

[6] Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 at [24] to [26]

[7] Merial Limited v Novartis AG [2013] APO 65 at [16]; MG Icon at [38]

[8] TRED at [40]

[9] MG Icon at [38]

[10] TRED at [45]

[11] Merial Limited v Novartis AG [2013] APO 65 at [18]

[12] Fonterra Co-operative Group Limited v Meiji Dairies Corporation [2014] APO 11 at [16]; see also lack of explanation of 6 week delay MG Icon at [40] to [41]

[13] MG Iconat [37] to [49]

[14] Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [24]

[15] Innovia Security Pty Ltd v Visual Physics LLC [2014] APO 15 at [21] and [24]

[16] MG Icon at [41] and [48]

[17]MG Icon at [46]

[18] MG Icon at [49]

[19] MG Icon at [42]

[20] ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V. [2014] APO 22 (15 April 2014)

[21] TRED at [64]

[22] Merial Limited v Novartis AG [2013] APO 65 at [25]

[23] TRED at [67]

[24] MG Icon at [29] to [30]

[25] TRED at [69]

[26] TRED at [71]

[27] Merial Limited v Novartis AG [2013] APO 65 at [24]

[28] Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [31]

[29] Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [33]

[30] Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21 (11 April 2014)

[31] MG Icon at [33]

Australian Technologies Competition – Entries Close 6th May 2014

Australian Technologies Competition – Entries Close 6th May 2014

The Australian Technologies Competition, now in its 4th year, is a competition open to SMEs which have the commercial rights to intellectual property for a technology which supports an improvement in efficiency.

The top 30 entries will be awarded entry to specialised business accelerator and international market entry acceleration programs.

Entry into the competition is by submission of a relatively simple form, so, if you think you qualify and would benefit, submit your application now.

Australian Patent Opposition Extensions of Time – A Review

Australian Patent Opposition Extensions of Time: A Review – 24 April 2014

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) came into force on 15 April 2013 and updated the Patents Act 1990 and the Patents Regulations 1991, including amendments to the procedures relating to patent oppositions. For many who regularly deal with patent oppositions, the changes to the extension of time provisions for filing evidence were always going to cause problems. A brief overview of the Australian opposition procedure can be found here.

The Old Law

Prior to 15 April 2013, IP Australia had to be reasonably satisfied an extension of time “is appropriate in all the circumstances”. Case law dictated that only basic reasons were required to obtain an extension and, therefore, the practice of obtaining multiple rounds of three month extensions was widespread. It was not uncommon for two or three extensions of time (of three months each) to be sought and obtained, meaning oppositions often took years to resolve.

The New Law

The intention of the law, as it currently stands, with respect to opposition proceedings is to “reduce delays” and “introduce a more rigorous test for granting extensions of time to file evidence”[1]. The test that IP Australia must now apply, when deciding whether to allow an application for an extension of time, has been revised. Regulation 5.9(2) of the Patent Regulations 1991 (as amended on 15 April 2013) requires the party applying for the extension must demonstrate that either:

  • they have made “all reasonable efforts to comply with all relevant filing requirements” and “despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period” are unable to do so; or
  • there are exceptional circumstances.

Notably, failure to make “all reasonable efforts to comply with all relevant filing requirements”, at any stage during the opposition procedure, may affect the ability to obtain an extension of time to a period in which it is possible to demonstrate that the party has acted promptly and diligently at all times.

The Current State of Play

Seven published decisions have issued dealing with extensions of time under the law as it applies after 15 April 2013 (up to 22 April 2014). Five of these decisions refuse an extension of time and two allow the extension. Of course, decisions only issue where either an extension of time is proposed to be granted and is objected to, or an extension of time is refused and the applicant (of the extension of time) requests to be heard. This does not necessarily represent all the extensions of time applied for and, at least, there is anecdotal evidence that extensions of time have been granted[2]. However, given the intent of the new extension of time provisions, I would expect that most patent attorneys would give considerable thought to objecting to any extension of time application which is proposed to be granted under the new law.

The decisions issued provide some guidelines as to what is required to obtain an extension. These are:

Reasonable Efforts

  • Making “all reasonable efforts to comply with all relevant filing requirements” is considered over the period of the whole opposition process, not just the evidentiary period in question[3].
  • Detailed submissions as to the actions taken to date, and, particularly, the period in question must be furnished.

“[I]t is necessary to understand the actions that they have taken (for instance, what was done, when it was done, how it was done, by whom it was done) covering at least the period in question, and the nature of the evidence that they are preparing.” – TRED v McCarthy[4]

  • Relying on one person, whether that it is the expert or the patent attorney, is not, necessarily sufficient; efforts must be made to seek an alternative or explain why that person is not replaceable[5].

Acting Promptly and Diligently

  • Consideration of the whole evidentiary period, not just any extended period, of the current phase of the opposition is relevant, when considering whether the party has acted promptly and diligently “at all times”[6].
  • “At all times” is a key aspect – there must be no significant gaps in the timeline[7].
  • Suspending work due to settlement negotiations, or waiting for the outcome of other processes, does not constitute acting promptly and diligently[7],[8].
  • An expert’s involvement in other opposition matters can be a relevant factor when considering whether the party has acted promptly and diligently, but evidence must be provided to demonstrate the effort required to be allocated to any alternative tasks and their urgency[8].

Notably, the issues of “making all reasonable efforts” and “acting promptly and diligently” are, often, considered to be one and the same[9].

Exceptional Circumstances

  • The only decision which has concluded that “exceptional circumstance” warranted the extension of time was a “stay” of the opposition proceedings by IP Australia[10]. No decisions have concluded that circumstances put forward by the relevant party have constituted “exceptional circumstances”.
  • Situations which would be regarded as exceptional circumstances include “matters outside the normal evidentiary process and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence”[11].
  • There appear to be obiter comments suggesting that a change in circumstances of an expert may constitute exceptional circumstances, such as unexpected leave or work commitments[12].
  • Exceptional circumstances are not: the new amendments to the regulations; an assertion that the acceptance of the application is in error; the request of an applicant for further and better particulars; holidays of an expert, where they were known well in advance of the deadline; documents in Evidence in Support that were not particularised in the Statements of Grounds and Particulars; procedural fairness; or the Melbourne Spring Racing Carnival[13]!

Summary

Overall, the application of the extension of time provisions by IP Australia is not surprising for those who attended any of the IP Australia workshops prior to the current law coming into force on 15 April 2013. It was fully expected that engaging experts at an early stage and otherwise ensuring that the opposition process never appears to “grind to a halt” would be required if an extension of time was ever going to be allowed. As such, IP Australia’s goal of increasing procedural efficiency with respect to patent oppositions is being achieved.

The question is whether the changes in the procedures actually correspond with the separate goal of “raising the bar” of patentability. Whilst patent opposition procedures clearly needed some attention, the results of the extension of time provisions are more likely to “lower” the bar to patentability, certainly in the opposition phase.

Related topics


[1] EXPLANATORY STATEMENT: Intellectual Property Legislation Amendment (Raising the Bar)

Regulation 2013 (No. 1)

[2] Merial Limited v Novartis AG [2013] APO 65 at [6]

[3] Merial Limited v Novartis AG [2013] APO 65 at [16]

[4] Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 at [40]

[5] Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 at [45]

[6] Merial Limited v Novartis AG [2013] APO 65 (5 December 2013) at [18]

[7] Fonterra Co-operative Group Limited v Meiji Dairies Corporation [2014] APO 11 at [16]

[8] Innovia Security Pty Ltd v Visual Physics LLC [2014] APO 15 at [21] and [24]

[9] Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [24]

[10] ExxonMobil Upstream Research Company v Shell Internationale Research Maatschappij B.V. [2014] APO 22 (15 April 2014)

[11] Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 at [64]

[12] Merial Limited v Novartis AG [2013] APO 65 (5 December 2013) at [25]

[13] Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21 (11 April 2014)

Further guidance on Australian and New Zealand software patentability

Further guidance on Australian and New Zealand software patentability – 17 April 2014

This article has been archived. For the most up to date information, please contact our software patent attorney.

In September 2013, we outlined conflicting authorities on the patentability of computer implemented inventions under Australian law (Practical guidance on Australian software patentability). Both of the conflicting authorities are on appeal – we are eagerly awaiting those decisions any day now.

In the meantime, it’s apt to draw attention to the explicit provisions of New Zealand’s soon to be implemented Patents Act 2013, which make clear that computer programs as such will not be patentable in New Zealand.

The as such provision is an import from European patent law (see Article 52 of the European Patent Convention) and the Explanatory Note of the statutory instrument which introduced the wording suggests that similar restrictions on what is considered patentable may apply. If case law in Europe is followed, computer implemented inventions allowable in Australia may not be allowable in New Zealand. However, conversely, computer implemented inventions in New Zealand are very likely to be allowable in Australia.

Clause 11 of the New Zealand Patents Act 2013, which will come into force on 13 September 2014, includes, includes examples of what is and is not patentable in relation to computer programs within the Act itself. In the face of the uncertainty of conflicting Australian authority, and the strong likelihood that New Zealand law will provide a less permissive view of patentable computer implemented inventions, these examples are useful reference points for patentability.

The examples include:

  1. a potentially patentable computer program that controls the operation of the washing machine; and
  2. an unpatentable computer program for automatically completing the legal documents necessary to register an entity.

The distinction turns on whether ‘the actual contribution made by the alleged invention lies solely in it being a computer program’. Example 1 qualifies because ‘the actual contribution lies in the way in which the washing machine works (rather than in the computer program per se)’.

This concept of ‘actual contribution’ seems to be closely tied to the concept of the mere use of a computer discussed in our earlier article.

Importantly, the transitional provisions of the Patents Act 2013 state that the new law will apply to national phase application or convention applications filed on or after 13 September 2014, regardless of whether the international filing date or priority date was prior to that date. If New Zealand Convention applications and/or national phase applications to computer implemented inventions are contemplated, early action should be taken to ensure that the applications benefit from the current, more lenient, law.

Further reading