In November last year the Australian Full Federal Court handed down its decision in Research Affiliates LLC v Commissioner of Patents concerning the patentability of business methods and software (see article here). As a result of this decision, Fisher Adams Kelly has recently overcome a number of patentable subject matter objections raised in relation to patent applications for software-implemented business methods. 

One objection frequently raised by the patent office is that such business methods are not patentable inventions because they are merely presentations of information implemented using standard computers. We have successfully overcome such objections by identifying that the presentation of information provides a functional advantage and clarifying that the actual content of the information is not being claimed. Our success in overcoming this type of objection indicates that while the Australian Patent Office rejects some computer related inventions in light of the recent Research Affiliates decision[1], inventions relating to functional presentations of information, such as improved graphical user interfaces, still can be patented.

In Australia, intellectual, visual or artistic content has generally been considered by the courts to not be patentable on the basis that it belongs in the fine arts.[2]  As a result, the Australian Patent Office will generally object to claims to presentations of information that are characterised solely by the content of that information.[3] 

Nevertheless, the Australian Patent Office endorses that presentations of information that provide a “material advantage” should not be excluded from patentability.[4] Here the term “material advantage” can be considered a broad reference to the principles of patentability set down by the High Court of Australia in the NRDC case[5]. The Full Federal Court confirmed in the Research Affiliatesdecision that these principles should be applied irrespective of the area of human endeavour and invention under consideration. 

Under the principles of patentability, an invention is typically considered to be patentable subject matter if it produces, improves, restores or preserves a product that has utility in practical affairs.  The term “product” refers to any physical phenomenon in which a new and useful effect may be observed.  However, as was clarified in both the NRDC case and the Research Affiliates case, the new and useful effect must be a separate result that possesses its own economic utility consisting in the improvement, and does not include variants of known procedures, such as merely writing, displaying or transmitting new information.[6] 

Therefore, where presentations of information fall within the above principles, they may be considered patentable subject matter. Such presentations of information include new interactive displays or graphical user interfaces that improve an interaction between a user and software/hardware on a computer.