Is My Software Patentable?

Patents can be a valuable intellectual property asset for any business, providing a commercial advantage over competitors and helping to attract external investment. In the digital sector, patent applications for computer technology and digital communications made up over 10% of Australian standard patent applications in 20201, reflecting the increasing use and development of tools such as cloud-based platforms, automation, and AI to improve efficiency and drive new methods of service delivery.

Despite this, some recent cases have caused uncertainty as to when software inventions will be patentable. In particular, technology and software businesses need to consider the ‘manner of manufacture’ findings in recent computer-implemented invention cases when considering whether to file a patent application. 

Patent requirements

Patent applications are examined against the following criteria:

  1. Is the invention different to what has been done before? (Novelty test);
  2. Does the invention involve an inventive step, when compared against the ‘prior art’? (Inventive step test); and
  3. Is the invention tangible and capable of patent protection? (Manner of manufacture test).

Recent ‘manner of manufacture’ case law

Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt Case)

The Full Federal Court in the Rokt Case provided some important commentary in relation to the third patent criteria above. This case concerned a digital advertising system or method used to enhance levels of consumer engagement.

The primary judge accepted expert evidence that “the substance of the invention was to introduce a dynamic, context-based advertising system” ([39]) and that this was “an improvement in computer technology” ([44]). The Commissioner of Patents sought leave to appeal to the Full Court on the basis that (amongst other things) the primary judge erred in holding that the invention satisfied the manner of manufacture test.

The Full Court confirmed that computer-implemented inventions will not satisfy the manner of manufacture test where the invention is merely instructions as to the application of a scheme using ‘generic’ computer technology. That is, the invention needs to contain an improvement in computer technology which amounts to a ‘technological innovation’.

Repipe Pty Ltd v Commissioner of Patents (No 3) [2021] FCA 31 (Repipe No. 3)

Repipe No. 3 is the most recent case that has considered software patents. This case concerned a system that provided and received information using computer technology in a workplace health and safety context. The Federal Court confirmed that where the overall functionality of a computer-implemented invention relates solely to an idea or business scheme, it is not enough that that functionality is embodied through software. The claims were determined to be nothing more than an instruction to carry out a workplace health and safety document scheme using generic computer technology.

In particular, the Federal Court at [12] made references to its findings in Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956 (Repipe (No 1)) which were as follows:

“93… The substance of both inventions is a mere scheme that can be implemented using some unidentified software application to cause a server computer and smartphone to perform the steps identified in the claim. …

94… The language used by patent attorneys when drafting and amending claims cannot convert what is, in substance, an unpatentable business method or scheme into a patentable invention by merely asserting that the invention is in the field of computer technology or by using words in the claim or specification that refer to computer technology…”

Key takeaway

In order to be protected by patent law in Australia, a software invention needs to involve an improvement to technology – i.e. a technical solution to a technical problem (for example, a solution which enables a computer to process data faster, or to perform a new function).

Alternative protection mechanisms

Copyright – Helpfully in Australia, copyright protection in certain types of works automatically exists upon their creation and does not require a copyright owner to register for copyright protection. This means that any specific code in software or a computer program is protected, as they are likely to be considered literary works for the purposes of the Copyright Act 1968 (Cth). This protection does not extend to the ideas or methods associated with the software or computer program.

Circuit Layout Rights – Layouts of integrated circuits are also automatically protected in Australia under the Circuit Layouts Act 1989 (Cth) (Circuit Layout Act). Some computer programs may also be embodied in circuit layouts and therefore may amount to ‘eligible layouts’ under the Circuit Layouts Act.

If you would like to discuss IP protection and commercialisation strategies for your software or other technology solution, contact Hamilton Locke’s IP and Technology team.

1 IP Australia: Australian Intellectual Property Report 2021 (Chapter 2: Patents)