Are subject matter laws affecting commercialisation strategy
Online Meeting with LESANZ Executives. Do you have any views on how Australian laws on patenting of software and computer implemented inventions are affecting commercialisation and investment? LESANZ will be preparing a submission, coordinated by LESANZ Secretary Chris Wilkinson and we are seeking your views. IP Australia has approached LESANZ seeking our input on impact of current patentable subject matter laws for “computer implemented inventions” on Australian industries.
Help required – Are subject matter laws affecting commercialisation strategies in AU
LESANZ has a broad member base and thus is in a unique position to provide input on the issue. However we can only include what you tell us!
Do you have any views on how Australian laws on patenting of software and computer implemented inventions are affecting commercialisation and investment?
IP Australia has approached LESANZ seeking our input on impact of current patentable subject matter laws for “computer implemented inventions” on Australian industries.
Specifically IP Australia would like to know any effects of the current law in relation to the patenting of computer implemented inventions is having on businesses. This could cover:
~ any challenges current laws have for Australian industries;
~ case studies where the law in Australia or overseas has changed the investments or IP strategies regarding computer implemented inventions;
~ examples of where the patentability of specific inventions has differed between Australia and other jurisdictions; and/or
~ any views on changing or retaining current Australian law.
LESANZ will be preparing a submission, coordinated by LESANZ Secretary Chris Wilkinson.
So what are computer implemented inventions?
Computer implemented inventions is the broad name for software inventions, and covers any systems involving the use of computers. This ranges from AI, machine learning, and internet/Web related inventions, to systems in which a computer is used to collect data or control a device such as boom gate, electronic gaming machines, or diagnostic equipment.
Patentable Subject Matter
In order to be granted a patent, an invention must fall within the field of allowable patent subject matter. Subject matter tests are directed at what class of inventions should be allowed to be patented, and what should be excluded. This a separate requirement to the novelty and inventive step requirements, and is supposed to be independent but in practice there is some merging of the assessment with the these requirements.
The current issue
In recent years, there has been considerable uncertainty about the correct test to apply and where the limits lie in relation to computer implemented invention.
In late 2022 the Aristocrat case made it to the High Court. This was a case around whether an electronic gaming machine (a computer implemented invention) was patentable. IP Australia had refused the application, a Judge in the Federal Court found it was patentable, the Full Federal Court found it was not patentable, and so the High Court took on the case. Unfortunately on the day of the hearing one Judge was absent due to illness, and the Court returned a 3:3 split. The three judges who found the invention was directed to patentable subject were quite critical of IP Australia’s approach.
IP Australia have recognised this has created uncertainty and is now seeking input on the effects of current laws in Australia. As part of this they have invited LESANZ to make a submission on behalf of our member base
LESANZ will be preparing a submission on behalf of our members which Chris will be coordinating.
We would thus like to seek input from our members on how our current patentable subject matters in this area is affecting commercialisation and commercialising strategy.
The Request from IP Australia
IP Australia is seeking feedback from key stakeholders on the patenting of computer implemented inventions in Australia and we would like to know LESANZ’s views.
We have heard from some stakeholders that recent court decisions have not provided certainty on what is patentable subject matter in Australia for computer implemented inventions. The concern is that this uncertainty is affecting the IP strategies and commercial activities of innovative businesses.
To better understand these concerns, IP Australia is undertaking targeted consultation with intellectual property professionals and other stakeholders with a commercial interest in this issue. We invite you to make a submission to IP Australia on any effects of the current law on businesses. This could cover:
~ any challenges current laws have for Australian industries
case studies where the law in Australia or overseas has changed the investments or IP strategies regarding computer implemented inventions
~ examples of where the patentability of specific inventions has differed between Australia and other jurisdictions
~ any views on changing or retaining current Australian law.
IP Australia will be commissioning research into the outcomes for computer-implemented inventions in other jurisdictions to see how Australian law and practice compares, and will make those findings available. This research, together with stakeholder submissions, will help us to understand the extent of the issue and whether we need to consider it further.
Our response to IP Australia is to be compiled and submitted by 29 Feb 2024.