Australia awaits Federal Court guidance on the patentability of computer-implemented inventions

Date: 2014-07-23
Authors: Carl Harrap & Stuart Irvine

Anyone with an interest in the patentability of computer-implemented inventions in Australia has been awaiting judgment in the appeal to the Research Affiliates LLC v Commissioner of Patents decision.

Anticipation is that this decision will clarify Australia’s position on the extent to which computer-implemented inventions are patent-eligible subject matter. 

Based on court orders published yesterday (22 July 2014), though, it may still be some time before a judgment is issued.


In 2013, two first instance decisions regarding the patentability of computer-implemented inventions were handed down: Research Affiliates and RPL Central. Background to the Research Affiliates case is discussed in brief here, and the first instance RPL decision here.

Appeals were filed in respect of both decisions, and on 18 November 2013 the appeal to the Research Affiliates case was heard by Australia’s Full Federal Court. Leave to appeal the RPL Central decision was stood over pending judgment in the Research Affiliates appeal.

Accordingly, the Australian patent profession, patent applicants with computer-implemented inventions, and presumably the Australia Patent Office itself have been eagerly awaiting the Research Affiliates appeal decision.


Decision timing

Given the appeal was heard in November 2013, a judgment could have been expected any time now.

Yesterday, however, orders were entered giving the parties leave to submit further written submissions “to address the relevance of Alice Corp Pty Ltd v CLS Bank International, 134 S Ct  2347 (2014)” [the recent US Supreme Court case dealing with subject matter eligibility issues – discussed here].

The orders are that any submissions must be filed by 4 August 2014, after which they will of course need to be considered by the Court before any judgment is issued.