In 2022, the High Court of Australia notoriously issued a split 3-3 judgement in a decision that was supposed to clarify the state of the law on patentable subject matter for computer-implemented inventions (CIIs). Instead, the split decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (Aristocrat) meant the Full Court’s decision was affirmed by default and creators of CIIs were left in doubt as to what can be patented in Australia.[i]

The Federal Court of Australia has now issued two single judge decisions demonstrating that the door is still well and truly open to obtaining patent protection for CIIs in Australia following the frustrating outcome in Aristocrat.

The test for patentability of CIIs

For an invention to be patentable in Australia, it must be for a “manner of manufacture”.[ii] An invention is generally considered to be a manner of manufacture if it involves an artificially created state of affairs in a field of economic utility.[iii] However, this test has been expanded upon by the courts in recent years in an effort to account for technologies not contemplated when the manner of manufacture test was first devised.

Relevantly, following a series of decisions that for better or worse shone a spotlight on the patentability of CIIs in Australia,[iv] the Full Court in Aristocrat set out the following further two-step test for determining whether a claim to a CII is for a manner of manufacture:[v]

  1. Is the invention claimed a computer-implemented invention?
  2. If so, can the invention claimed broadly be described as an advance in computer technology?

While the Full Court’s Aristocrat decision was technically affirmed by the High Court failing to reach a majority decision, and all six judges affirmed the series of decisions mentioned above, neither plurality of judges agreed with the two-step test articulated by the Full Court in Aristocrat. However, both pluralities did arrive at following principles for assessing manner manufacture in the context of CIIs:[vi]

  1. in considering whether there is patentable subject matter, the court must, as a matter of claim construction, focus on the substance of what is claimed, and not the form, and accordingly there is a need to first characterise the invention;
  2. schemes and plans that are not inherently patentable and that are merely implemented on a computer, without providing a contribution to technology, do not become patentable as a result; and
  3. patentable subject matter exists where there is something more than mere implementation, which may include an improvement in computer technology or an artificial state of affairs and a useful result that involves a technical contribution.

The Federal Court’s approach following Aristocrat

The first decision to consider the patentability of CIIs following Aristocrat, Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585 (Motorola), issued in December 2022 but was subject to confidentiality orders and was only recently published with confidential information removed. This decision concerned three patents directed to methods and systems that improve the efficiency of Time Division Multiple Access (TMDA); a communications technology that “permits a frequency band within the radio spectrum (a channel) to be divided into timeslots so that more than one person may use the same channel at the same time”.

In Motorola, Perram J found that the relevant claims – directed to a method and system that improves the time taken to scan a channel to determine whether there is activity on that channel – are for a manner of manufacture. His Honour dismissed Hytera’s contention that the claims have the nature of “a scheme, working directions or directions for use” as opposed to an improvement in computer technology as contemplated by the Full Court in Aristocrat. Rather, Perram J considered the invention comparable to a curve drawing algorithm found to be patentable in International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR 218, noting that the claimed invention “improves the way a particular class of computers – base stations and subscriber units – scan frequencies”. How the invention improved scanning times was considered to be plainly an improvement in computer technology.

The second decision, UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885 (UbiPark), concerned claims directed to a system comprising a communication system and a computer program executable by a mobile communication device, such as a smartphone. The system was “configured to determine signal strengths of entry signals and exit signals to control a user’s entry into and exit from a restricted area, in conjunction with the use of authorisation data”.

In finding that the claims define a manner of manufacture, Moshinsky J referred to the reasoning of Kiefel CJ, Gageler and Keane JJ in Aristocrat, who stated:

In relation to computers and computer-related technology, it has been held in decisions of the Federal Court that a claimed invention will be a proper subject of letters patent if it has some “concrete, tangible, physical, or observable effect”, as distinct from “an abstract, intangible situation” or “a mere scheme, an abstract idea [or] mere intellectual information”.

While acknowledging that TMA’s claims comprise a series of instructions to be executed by a computer, his Honour also considered the claims have some “concrete, tangible, physical, or observable effect” in that they result in the opening of an entry barrier and an exit barrier. While this effect was not explicitly stated in the claims, Moshinsky J considered “the invention as claimed constitutes an abstract idea that is ‘implemented on a computer to produce an artificial state of affairs and a useful result'”.

Relevantly, Moshinsky J distinguished the claims at issue from other decisions in which it was held that particular CIIs were not patentable subject matter as follows:

Unlike this case, those cases were concerned with mere schemes or abstract ideas implemented on computers, which were not otherwise tied to the doing of any physical thing or the creation of any physical or tangible result. In the present case, a useful physical or tangible result is achieved, aside from the fact of the use of computers to implement the invention.

Thus, the UbiPark decision suggests that an abstract idea, implemented on a computer, may nonetheless be patentable where it results in a concrete, tangible, physical, or observable effect, regardless of whether that effect is explicitly defined in the claims.

Where to next?

With no binding decision reached by the High Court in Aristocrat, it was unclear how the courts would assess patentability of CIIs moving forward. Accordingly, the Motorola and UbiPark decisions are positive for creators of CIIs and show that their inventions may be patentable in Australia where they provide an improvement in computer technology or result in a concrete, tangible, physical, or observable effect.

As acknowledged by Perram J in Motorola, the lack of any ratio decidendi by the High Court in Aristocrat means a single of judge of the Federal Court is bound to follow the Full Court’s Artistocrat decision, and the Full Court decisions on CIIs. However, it is important to note that the decisions are not binding on the Full Court. Thus, if the UbiPark decision is appealed, it will be interesting to see whether the Full Court will uphold the decision, and whether it will yet again seek to reformulate the test for patentability of CIIs.