Following on from recent Patent Office success in court in rejecting Business Method Patents, the Patent Office has released new guidelines on the patentability of computer implemented inventions.
Whilst the court authorities are presently on appeal, the Office is proceeding to issue the guidelines to align practices with their preferred position, which was adopted by a recent Full Federal Court decision. The new guidelines appear to centralise power with the Office in adopting an approach that the Office will ‘go beyond the form of words used’. The Office will be allowed to allege the ‘substance of the alleged invention’ is a scheme even where the claims define a physical product.
The list of factors the Office will take into account are many and varied, and appear to leave a wide discretion to the Office, in the rejection or acceptance of Patent applications. Factors include whether the ‘contribution’ is technical in nature. Whether the method ‘merely requires a generic computer implementation’. The factors appear to be driven by the Office’s desire not to consider business method innovations as worthy of protection. No consideration of the need to protect this area of innovation appears to have been given. There also appears little chance of legislative amendment in the foreseeable future.
Overall, there is a necessity for applicants to carefully consider the drafting of their patent applications in order to minimise the opportunities for the Office to reject an applicant’s innovative endeavours as being too ‘business method’ in nature. Through careful drafting, applicants may be able to negate the Office’s wide discretion.
This article by Shelston IP Principal, Peter Treloar, first appeared in Managing Intellectual Property magazine, March 2016.