The Australian Patent Office on computer implemented inventions – 3 March 2016
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Following a string of court decisions on the Australian patentable subject matter requirement (formally the ‘manner of manufacture’ requirement), the Australian Patent Office (APO) has updated its examination manual (here) in connection with computer implemented inventions.
The APO correctly observes that ‘Under Australian law, there are no specific exclusions for software or methods that are implemented as computer software or a related product’, and in line with recent authority goes on to emphasise that:
- there is a distinction ‘between technological innovation which is patentable and a business innovation which is not’; and
- ‘it is necessary to go beyond the form of words used’ and to consider what is claimed ‘as a matter of substance’.
The draftsman’s art is as important as ever. Claiming a technical innovation that is novel and inventive may not be sufficient. It is important also to emphasise the technical nature of both the problem and the claimed solution, lest a patent examiner goes beyond the words of the claims to conclude that the substance of that technical innovation is fundamentally non-technical and thus not patentable.