Patent drafting tips for computer-implemented inventions in Australia


2 min read

In two significant Federal Court of Australia cases, Research Affiliates and RPL Central, the patentability of computer-implemented inventions was critically examined, providing key insights for intellectual property management in Australia.

Research Affiliates' application for a passive investing method was deemed unpatentable at both the Patent Office and on Federal Court appeal. The method's outcome, a file with a financial index, was seen as mere data, failing to constitute the 'artificial state of affairs' required for patentability under Australian law. The court also noted the need for a more detailed description of how the computer implemented the investment method to achieve a tangible or physical effect.

Conversely, the Federal Court found RPL Central's method for assessing competency against recognised standards patentable, overturning the Patent Office's decision. The Court highlighted the detailed description of the method's improvements over existing processes, including the automated generation of interfaces for administrative tasks. This method created an 'artificial state of affairs' by transforming data and providing economic benefits to the education sector.

These cases underscore the importance of detailing in patent specifications how a computer-implemented invention produces a physical effect or changes state beyond mere data manipulation. The decisions suggest that patentability hinges on demonstrating how the computer acts as a machine to transform information into a useful, tangible outcome. While the Patent Office aligns with the Research Affiliates approach, these cases are under further appeal, indicating evolving standards in this area.

For businesses and patent practitioners, the key takeaway is to ensure patent specifications for computer-implemented inventions clearly articulate the invention's physical effects and transformational aspects, stepping beyond mere data processing. This approach aligns with the broader global perspective on patentability, particularly the US machine or transformation test, and is essential for safeguarding computer-implemented intellectual assets in Australia.