Let’s Get Physical

Computer Implemented Inventions in Australia

In an ever-evolving technological landscape, one of the most contentious topics is the patentability of computer-implemented inventions in Australia. Given the recent cases and a legal framework that is far from black-and-white, it’s essential to unpack the key issues.

Specifically, we will look at the concept of “Manner of Manufacture” and recent cases—most notably Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (Aristocrat) and UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885 (UbiPark).

“Manner of Manufacture” Revisited

For an invention to be patentable in Australia, it has to pass the “Manner of Manufacture” test, traditionally requiring a physical thing or the creation of any physical or tangible result. This standard becomes complex when applied to IT-related inventions. The Aristocrat case ended in a 3:3 split decision, leaving the matter unresolved and reaffirming the Full Court’s earlier decision, which means it’s “business as usual” in the treatment of computer-implemented inventions.

UbiPark: A Glimmer of Hope?

The recent UbiPark case provided an insightful judgement. The invention at issue was an access control system for restricted areas (typically parking lots). The court ruled the invention did indeed meet the “Manner of Manufacture” criterion, as it achieved a “physical thing or the creation of any physical or tangible result,” i.e., the opening of entry and exit boom gates. This element was central to the invention’s operation, suggesting that the physical or tangible effect required for patentability needs to be integral to the invention itself.

Justice Moshinsky distinguished UbiPark from earlier decisions, noting that unlike previous cases dealing with “mere schemes or abstract ideas,” UbiPark’s invention produced a useful physical or tangible result. This offers some guidance, albeit limited, for future computer-implemented inventions that can produce a tangible result.

The Grey Area

The complexity in patenting computer-implemented inventions in Australia lies in the massive grey area between what clearly is and isn’t a “Manner of Manufacture.” For example, an app providing a list of recipes based on ingredients at hand wouldn’t fit the bill. In contrast, an app interacting with a Bluetooth sensor on your bike to tell you how fast you’re pedalling would likely be patentable. It’s this uncertainty that continues to vex inventors and legal practitioners alike.

Conclusion

The lingering ambiguity, even after landmark cases like Aristocrat and UbiPark, illustrates the challenging environment for computer-implemented inventions in Australia. The Aristocrat case failed to provide a decisive ruling, and while UbiPark offers a glimmer of hope, it doesn’t entirely dispel the uncertainty surrounding what constitutes a “Manner of Manufacture.”

As we look towards the future, the hope is for clearer guidelines or definitive case law to demystify the landscape. Until then, the struggle to patent computer-implemented inventions continues, keeping both inventors and patent attorneys on their toes.