Obtaining a patent for computer-implemented inventions (“CIIs”) is notoriously difficult. Patent registers around the world are littered with skeletons of CII patent applications that have been abandoned or refused.

Patents protect “technical” advances – improvements in how things work. Unfortunately, many computer-implemented inventions boil down to clever uses of existing hardware and software technologies. The result may be useful, even a game-changer, but the “how it works” is generic and therefore not “technical” in a patent sense.

That’s why the success in the recent case of Jagwood Pty Ltd [2020] APO 38, successfully handled by PIPERS Patent Attorneys, is so encouraging.

Jagwood developed a system for processing electronic payment transactions that “binds” a payment together with its financial document, such that it arrives to the payee as a single package. A short-form URL in the payment reference field acts as a “key” via which the payee can access the financial document. This is a significant improvement on previous systems where the payment and its financial document were sent completely separately and had to be “matched” by the payee at the receiving end.

So, what was the secret ingredient?

The one hiding in plain sight, as it turned out. We were able to successfully demonstrate to IP Australia that Jagwood’s system had a “technical” character because it relied on a unique computer architecture. The way the short-form URL was used, as a “key” that was able to be sent through the banking system, was something that hadn’t been done before. As such, the invention was more than simple programming, or a use of existing computer software and hardware.

After receiving objections from the Patent Office, we took the case to a hearing. This gave us the opportunity to explain to IP Australia in detail why the invention embodies a new computer architecture and hence is technical in nature.

The Hearing Officer agreed, stating: “the location of the financial document and the use of this location in the reference field of the electronic payment system are inexorably intertwined with the computing and networking systems. It is a technical solution because this synergistic utilization of technology overcomes the problems faced by the inventor”.

Takeaways

When you develop a CII, “stress-test” it by asking whether it’s just a clever use of generic software / hardware, or whether there’s something new or unusual about the “architecture” of the system. Is the computer doing something that’s “foreign” to how computers usually operate? If so, then it might just have the required “technical character” for a patent.

It’s critical to obtain advice from experts in patent law, who can hone in on any technical character underpinning your CII invention, and tease it out so it’s clear for the Patent Office to see.

Your invention may well have the required “technical” aspect, but unfortunately the tendency of Patent Offices is to object to CIIs as a matter of course unless they can be convinced otherwise.

That’s where experts like us come in.