The Australian Patent Office updated its Patent Manual of Practice and Procedure (the Australian Examiners Manual) to make a variation of the England and Wales Court of Appeals’ four-step test – the test for patentable subject matter in Australia (previously reported here). This approach is yet to be tested before the Australian Courts, although two Australian Patent Office decisions have now resulted in appeals to the Federal Court. In a new development, the application of the four-step test has been further explored in a UKIPO decision (Landmark Graphics). Time will tell whether the outcome of the Landmark Graphics case will filter through to examination practice in Australia.

As set out in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application, [2006] EWCA Civ 1371 (Aerotel/Macrossan), the four-step test is now the primary approach to the examination practice in patentable subject matter (manner of manufacture). It is thought that the approach is derived from Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, where the Full Federal Court noted similarities in approach between Australia, the United Kingdom (UK) and the United States. In particular, the UK consideration of the ‘necessary technical contribution’, in the context of the statutory exclusions existing in the UK, was of relevance to an analysis of a necessary technical or artificial effect under Australian law.

It follows that UK cases may provide assistance in the determination of ‘the substance’ or actual contribution of the claimed invention and, in a broader way, to what is and is not considered patentable subject matter under Australia law.

Recently in the UK, sixteen patent applications owned by Landmark Graphics were rejected for want of patentable subject matter during examination and set down for a series of hearings. They related to computer implemented inventions, working with models of subterranean geology and subsurface formations and the like. In a decision relating to a first group of seven applications, the Hearing Officer determined that the UK examiners were incorrect and that the applications did not contain excluded subject matter, generally concluding that the examiners had incorrectly applied the Aerotel/Macrossan four-step test—highlighting the difficulty of a one size fits all test for patentable subject matter. The Hearing Officer even appears to suggest that examiners should give the benefit of doubt to applicants if they can make a reasonable case that an invention is of a “technical nature” (BL O/112/18 at [17])—a point of frustration common to Australian applicants.

Given the Australian Patent Office appears to be wholesale adopting the UK approach assessing patentable subject matter, time will tell whether the outcome of the Landmark Graphics cases will filter through to examination practice in Australia. On the face of it, the Landmark Graphics cases may provide a beneficial side effect for Australian applicant’s if the Australian Patent Office adopts the UKIPO’s current approach to excluded subject matter.

It is hoped that these decisions will create greater certainty and consistency in the approach taken by the Australian Patent Office across all fields in which subject matter eligibility is commonly at issue, but particularly with respect to computer implemented inventions.