PatentableComputer-Implemented Methods and Software

In today’s information society, we cannot live without computers and computers need software[1]. Computer hardware is more likely to be patentable subject matter than software. Patenting software enters the realm of trying to protect methods similar to thought processes and has met with resistance from the judiciary in recent years.[2].

It all boils down to whether the alleged invention enhances the functioning of a computer system or computer. Does it have a novel technical application that solves a specific problem outside or within a computer?[3]. A helpful way to think about whether a method or software application is patentable is to consider whether the invention relates to a business innovation or a technical innovation – the latter is patentable but the former is not[4]. Furthermore, if the computer is used in a way that goes beyond its routine capabilities, it will be considered a technical innovation and patentable[5].

In practice, the difference between patentable and non-patentable software can be difficult to distinguish. We recently received a new and favourable examination outcome to an application to patent a technical method incorporating software functionality. It confirmed for us that the Australian Patent Office is applying the criteria above when examining computer-implemented and software applications. If you have a technical innovation for software that meets the criteria outlined above, we recommend that you contact us to discuss the patentability of the invention’s technical aspects to determine whether it is viable to pursue patent protection.

 

[1] WIPO, “Patenting Software.”

[2] Ibid.

[3] Rock, “Patenting Software in Australia.”

[4] IP Australia, “Patents for Computer Implemented Inventions (Software Patents).”

[5] Ibid.

 

References:

IP Australia. “Patents for Computer Implemented Inventions (Software Patents).” Text, May 17, 2018. https://www.ipaustralia.gov.au/ip-for-digital-business/idea/software-patents.

Rock, Katherine. “Patenting Software in Australia: Australian Patent Office Says No in July 2017.” Lexology, August 8, 2017. https://www.lexology.com/library/detail.aspx?g=bc0077a5-3a9b-45b2-989b-a0788e04eeef.

WIPO. “Patenting Software.” WIPO. Accessed March 21, 2019. https://www.wipo.int/sme/en/documents/software_patents_fulltext.html.