Patents and Computer Software Law
The Patents Act 1990 will allow patent of an intangible product, which may include computer software, where the software is novel and inventive, and provides a commercially useful effect. However, the Australian Patent Office will reject patent applications for computer software if the software is merely a set of working directions constituted by mathematical algorithms.
Courts have previously decided that mathematical algorithms, such as those used in computer programs, are unable to be patented because "Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." ( Parker, Acting Commissioner of Patents and Trade Marks v Flook 198 USPQ 193 (1978)). Software has also been denied patentability as "the instructions in a computer program do no more than prescribe a particular manner of operation of a computer within the range of operations for which it was constructed." ( Gale's Application [1991] RPC 305, 324)
However, more recent Australian cases have suggested that if the known algorithm is applied by the software in a way that is inventive and produces a commercially useful product, the software may be patentable. In International Business Machines Corp v Patents Cmr (1991) 33 FCR 218; 405 ALR 388, the Federal Court found that the "method and apparatus for generating curves on computer graphics displays" using known algorithms was able to be patented:
It is not suggested there is anything new about the mathematics of the invention. What is new is the application of the selected mathematical methods to computers, and in particular, to the production of the desired curve by computer. This is said to involve steps which are foreign to the normal use of computers and, for that reason, to be inventive. The production of an improved curve image is a commercially useful effect in computer graphics.
In CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260; 122 ALR 417; 28 IPR 481, a processor for the storage and retrieval of Chinese characters was said to result in a commercially useful effect and thus could be a patentable "method of manufacture". The test of whether software is patentable developed from this case is to ask whether it is a "mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour." This is clearly a wide definition, as the Australian Patent Office Manual of Practice and Procedure 2.9.2.7 states that a "mode or manner" will nearly always include:
- source code for patentable computer software
- executable code for patentable computer software, which is in a machine readable form, and
- a computer, when programmed to achieve any result which has utility in the field of economic endeavour
An algorithm on its own will not fulfil this test, although as one of the steps of a patentable method it may be subject to patent.
The current widening of patent law in regards to computer software has been given some degree of endorsement by the High Court in their reference to the CCOM decision in Data Access Corp v Powerflex (1999) AIPC 91-514, where it was noted that "In form, the definition of a computer program seems to have more in common with the subject matter of a patent than a copyright."
While the law has been widened, it is a requirement that the software offer a material advantage in the sense that it belongs to a useful art and has value in a field of economic endeavor ( Welcome Real-Time Sa v Catuity Inc and Others (2001) 51 IPR 327). Hence, a Patent on software that is only for pleasure and enjoyment will be rejected ( A Couple 'a Cowboys Pty Ltd v Ward (1995) 31 IPR 45; [1995] AIPC 91-168). In addition, the Australian Patent Office's decision in Re. Innovation Patent by Peter Szabo & Associates Pty Ltd [2005] APO 024 emphasised that the scope of patent laws have been historically extended in relation to new areas of science or technology, and hence a patent which did not embody elements of science or technology in any material manner was rejected.
Other examples of software that have been patentable include a system that allowed internet users to subsidise connection fees with banner advertisements ( Delaney Capital Pty Ltd v Nicholas George Mountford [2002] APO 37). A system of programs for corporate travel planning, expense reporting and management was also said to have patentable aspects, though the patent was rejected on other grounds ( Sabre Inc v Amadeus Global Travel Distribution SA [2004] APO 21 (19 July 2004)).