Anyone with even a remote interest in patents for computer implemented inventions in Australia will be familiar with the ongoing Aristocrat saga.
By way of very abridged summary:
- Australia’s Full Federal Court found the claims of Aristocrat’s patents (directed to computer-implemented inventions) were directed to patent-eligible subject matter;
- the Patent Office has updated the Australian Patent Manual of Practice and Procedure (the Manual) in view of the decision; and
- the Commissioner of Patents has requested special leave to appeal the Full Federal Court decision to the High Court.
(For more detailed background see here and here.)
The Commissioner’s reply submissions in the special leave request, however, suggest a disconnect between the examination division of the Australian Patent Office (presumably responsible for the Manual and day-to-day examination) and the legal division responsible for the appeal.
Based on the post-Aristocrat update to the Manual, the examination division appears to be of the view that the Aristocrat decision has little – if any – practical impact on the examination of computer implemented inventions from an eligibility perspective. Specifically, Section 5.6.8.6 of the Manual states (emphasis added):
Consequently, determining whether an invention is an abstract idea which is manipulated on a computer or an abstract idea implemented on a computer to produce an artificial state of affairs and useful result is best understood as being commensurate with assessing the substance of the invention as per existing case law prior to Aristocrat ‘25. That is, examiners may assess an invention according to Aristocrat ‘25 by utilising principles from established principles prior to this decision.
In reply submissions for the special leave application, however, the Commissioner submits that the Full Federal Court’s Aristocrat decision has changed the eligibility landscape for computer implemented inventions (emphasis added):
11. The Full Court has plainly departed from the reasoning in the earlier Full Court decisions …Rather, the Full Court appeared to disapprove of the central reasoning in the earlier Full Court authorities, namely that the implementation of an otherwise unpatentable abstract idea in a computer, using conventional or generic computer technology for its well-known and well-understood functions, is not a manner of manufacture.
Admittedly, the Full Federal Court’s approval in the Aristocrat decision of the results of the previous line of cases (Research Affiliates, RPL Central, Encompass, Rokt) does complicate matters. Notwithstanding this, it is difficult to reconcile the examination division of IP Australia proceeding on the basis that subject-matter eligibility is determined as per existing case law, while the Commissioner argues before the High Court that the Full Federal Court “has plainly departed” from the existing case law.
The approach of the examination division appears to reflect the Commissioner’s view of how the law should operate, and the special leave request seeks to have that interpretation confirmed. At the very least this indicates significant uncertainty – even within the Patent Office itself.
Given this uncertainty, the approach of the examination division seems particularly harsh.
By following the updated Manual, subject matter eligibility objections will continue to be raised and maintained for many computer-implemented inventions. Unless such an objection is challenged via a Patent Office hearing and – potentially – court appeal, it is effectively refusal of a patent application. Refusal is final.
Grant of a patent, on the other hand, can be revisited at any time through re-examination, which can be initiated by the Commissioner or any other party.
Clearly, the saga is not yet over.
In the meantime, if an applicant is facing an entrenched subject matter eligibility objection, maintaining a pending application is (if possible) likely to be warranted. The two obvious options for doing this are:
- Filing divisional application(s).
- Requesting a Patent Office hearing, which will effectively defer the final acceptance deadline.
The hearing path comes, however, with a cautionary note:
In several Patent Office Hearing decisions, Hearing Officers have reached the view that the application being considered did not describe any subject matter that could serve as the basis for claims directed to patent-eligible subject matter. These decisions also seem harsh – at the very least because applicants going into these hearings were, of course, only providing submissions in support of the specific claims on file – not all possible claims that could be drawn from the disclosure.
If not appealed, however, such a decision is effectively the death-knell for not only the application that was heard but any other family members. This can include any previously granted family members which – as noted above – the Commissioner of Patents can re-examine on their own initiative (and has done so on occasion following such an adverse decision).
