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Post #9 of our Top 10 of IP in 2020

As automation technologies advance, one of the current tensions in patent law is the extent to which claimed inventions implemented by operation of a computer are a “manner of manufacture”, or subject matter that is capable of being patented within the meaning of the Statute of Monopolies of 1623.  This nearly-400 year old law is still relevant to determining the patentability of digital technology today.  

There have been a number of cases in this area over recent years, followed by two more notable cases this year.

Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (21 May 2020)

The Full Federal Court found that the claimed invention in this patent application for a digital advertising system and method was a “marketing scheme”, and “the level of abstraction to which it is expressed demonstrates that it does no more than provide a list of steps to be implemented using computer technology”.  That is not patentable subject matter, and patent registration was rejected.

Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (5 June 2020)

This case involved one step more.  The Federal Court decided that the claimed inventions of electronic gaming machines were not mere schemes, on the basis that they also involved the use of physical hardware (computing devices, including a particular type of display, input devices, etc) to bring the invention into fruition, and therefore can be characterised as a manner of manufacture.  However, whether or not the claimed inventions are novel or have the required degree of innovative step (for an innovation patent), is another matter.

The key message is that mere ideas or business schemes are not patentable subject matter, but with some physical hardware integral to the invention, at least the patentability threshold may be passed.

Commercial lawyers, purchasers of businesses, insolvency practitioners, need to be alert to these issues when dealing with a business that has applied for patents that involve automated processes or computerised schemes.  Are the claimed inventions actually worth as much as asserted by a hopeful seller? ☁︎

2020 has seen a very healthy amount of activity in intellectual property law in Australia.  In no particular order, my Top 10 of 2020 series of posts contains my top ten things in IP from the year, and what they might mean for 2021. 

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