In key jurisdictions around the world, including Australia, the last three years have seen a number of court and patent office decisions surrounding the patentability of computer implemented business methods and inventions involving software. The outcome of these decisions has often been to limit the range of inventions in this field which can be patented.

However in a win for patentees, the Australian Patent Office recently issued a positive decision (FOXTEL Management Pty Ltd v British Broadcasting Corporation [2016] APO 19) on a computer implemented invention.

It was found that the substance of the invention related to a technological innovation, rather than a scheme or business method. Accordingly, the claims were ruled to include patentable subject matter.

The case

The patent application was filed by the BBC and concerned a method and system for providing users access to media content broadcast on a scheduled basis such that a user can download the content before the scheduled broadcast time. The content then can be subsequently played by the user on or after the scheduled broadcast time, but not before. Foxtel had opposed the grant of the application.

The Delegate considered and applied the principles established in two well known previous cases: Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (‘Research Affiliates’) and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (‘RPL Central’). The principle applied was that a claimed invention should be understood as a matter of substance and not as a matter of form in order to determine whether an application is directed to patentable subject matter.

The arguments

Foxtel, in arguing that the claims of the application were not directed to patentable subject matter, submitted that determining the ‘substance of an invention’ involves an analysis of the alleged inventive step compared to the prior art – that is, to determine the substance of an invention it is necessary to determine how it differs from existing technology. Foxtel argued that in this case the substance of the claimed invention is in setting the time prior to which the content may be ordered and downloaded, and the time dependent upon which the content may be accessed to be equal to the scheduled broadcast time of that content.

Foxtel argued that this does not provide a technical contribution to the art and that there is no suggestion in the specification or the claims that any part of the inventive step lies in the computer implementation, and therefore the claims of the opposed application did not define a patentable invention.

The BBC based their submissions on the application of a two-stage test when assessing manner of manufacture (i.e. whether or not the invention is directed to patentable subject matter), based on the decision in RPL Central.

The BBC submitted that the first stage of this test is to determine whether the substance of an invention is a “technological innovation” or a “business innovation” (for example a scheme). The BBC argued that if an invention is found to be a technological innovation, then that in itself satisfies the patentable subject matter requirements without the need for further consideration. The BBC asserted that the second stage of the test, which is relevant only where the first stage reveals a “business innovation”, is to consider whether there is a threshold degree of inventiveness in the manner by which the business innovation is implemented by computer technology.

The BBC submitted that in the present case there was no need to move beyond the first stage of the RPL Central test, as it is clear from the patent specification that there is a technological problem in the context of delivering scheduled broadcast content at a time dependent on the broadcast time, and the claimed invention provides a technological solution to that problem.

The decision

The Delegate did not agree with Foxtel’s approach and found Foxtel’s arguments to be both “misconceived and unsustainable”. The Delegate reaffirmed that inventive step and manner of manufacture are two distinct requirements and must be treated as such.

The Delegate determined the substance of the invention to be providing broadcast content to a plurality of users via download, such that the users are unable to play the broadcast content prior to a scheduled broadcast time of said content.

The Delegate concluded that the substance of the invention clearly relates to a technological problem in the context of delivering the broadcast content to the users in a manner defined in the patent claims, and that a Digital Rights Management system, a personal computer and the Internet provide the necessary technological solution to the problem. The Delegate thus found claim 1 to be directed to patentable subject matter and so to define a manner of manufacture.


This is a very welcome decision by the Australian Patent Office, and demonstrates that by no means all computer implemented inventions will be rejected following the well publicised recent decisions of Research Affiliates and RPL Central.Many computer implemented inventions remain patentable in Australia where it can be shown that an invention is of a technical nature rather than a mere business method.