The difficulty in patenting computer-implemented inventions has been experienced by many would-be inventors. There are many hoops through which the invention must jump before it is deemed patentable. IP Australia has a non-exhaustive list of criteria for determining patentability of computer-implemented inventions, including questions such as is the computer-implemented method generic or is the computer’s functioning improved through the invention?[1]
A recent case F45 Training Pty Ltd v Body Fit Training Company Pty Ltd demonstrates the difficulty in not only patenting computer-implemented inventions, but also enforcing them. F45 claimed that Body Fitness Training was infringing their Australian Innovation Patent Nos. 2015101604 and 2016101429. Rejecting these allegations of infringement, Body Fitness Training argued that the patented scheme or method is not innovative and therefore the patents should be cancelled.
Justice Nicholas was chiefly interested in whether famous Dixon CJ criteria of an “artificially created state of affairs” could be found. Was the method step of “physical configuration of exercise stations” a patentable aspect?.[2] F45 argued that a computer alone was unable to arrange exercise stations in line with the data delivered in studio information program files – a human was needed to do this. The invention should be understood, in line with F45’s logic, as comprising a physical result by physical action (the human action in the process) through the utilisation of the computer implemented method.
However, Justice Nicholas was unconvinced that this in itself brought about the “artificially created state of affairs”. Justice Nicholas made the point that when adjusting to the change of seasons, a children’s playground or sports field is rearranged, but this does not make the rearrangement of equipment an artificially created state of affairs that qualifies it for a patent. In the same way, F45’s arrangement of fitness equipment according to information from a computer should not qualify for a patent.
Justice Nicholas went beyond ruling that the inventions were not patentable and argued that Body Fitness Training could not be found to have infringed F45’s patents, even if the patents were legitimate. Costs were awarded in Body Fitness Training’s favour and both of F45’s patents were revoked.
This case demonstrates the difficulty in patenting and enforcing computer-based inventions. For a computer-implemented invention to be patentable, there must be a surprising technical advance inherent in the new method that produces a new “physical or tangible result” through the computer’s operation. Just combining a new method of processing information using a computer will not be enough. If you have any questions about the patenting of computer-implemented inventions, please do not hesitate to contact us.
For the full case report, see here.
[1] IP Australia (Commonwealth of Australia), Manner of Manufacture Information and Computer Technology Patent Office Practice (IP Australia: November 2018), 13.
[2] Federal Court of Australia (Commonwealth of Australia), F45 Training Pty Ltd v Body Fit Training Company Pty Ltd (No 2) [2022] FCA 96.
