Now it’s patentable; now it’s not patentable; now it’s patentable…
The Research Affiliates decision that was handed down last November (2014) by the court of Appeal of the Federal Court has been much on my mind lately. In the last few weeks I’ve attended two seminars where speakers made mention of the case. In the first seminar the speaker continually mixed “manner of manufacture” and “inventive step” concepts, contrary to the judgment in RA and (also contrary to Justice Gummow’s teachings in Doric) and even more fundamentally, contrary to the provisions of the Patents Act!
In the second seminar the speaker advised us that the Australian court had approved the methodology set out in the US Supreme court for determining patent eligible / non-eligible claims, which I don’t think is correct either. Neither speaker pointed out that toward the end of the Research Affiliates decision there is a very helpful list of “does” and “don’ts” when drafting IT related patent specifications.
E.g. make the object relate to the improvement of a technical system, not an improved “way of doing something”. Make sure that there is a technical description of the processes that the IT system performs to transform its inputs into a real, tangible output.
In relation to patent ineligibility in the USA, for claims being directed to “abstract ideas”, the USPTO has issued two sets of example papers this year. These papers are very helpful because they set out several examples of what the USPTO considers to be claims to non-eligible “abstract” ideas and to patent eligible subject matter. In contrast to the situation in Australia, the USPTO attitude seems to be very much about what is written in the actual patent claims whereas the Australian attitude now seems to be to look at the whole specification and then read the claims down to what the “thrust of the invention” is as described in the preferred description of preferred embodiments.
I had a case earlier in the month relating to a patent specification for an IT system that had been drafted overseas. where we had received a “manner of manufacture” objection. Fortunately the application was proceeding under the pre-Raising the Bar amendments and so it was possible to make amendments to the specification to address the objection and the application has now been allowed. Phew!
(I can’t believe it’s been over a year since my last post. How did that happen?)