Griffith Hack secures wins for patents for computer implemented inventions

20 April 2018

Griffith Hack attorneys Nick Mountford and Jeremy Robinson have succeeded in overcoming objections by examiners at the Australian Patent Office to the granting of patents for computer implemented inventions where others have failed.

Patents for computer implemented inventions have become harder and harder to win as patent examiners have increasingly objected to granting them on the grounds that they are not directed towards patent eligible subject matter.

Patent applicants can challenge objections by asking for a hearing which results in a published decision. The vast majority of hearing decisions have resulted in outright refusal of the application under consideration.

But in the hearings Bio-Rad Laboratories, Inc. [2018] APO 24 (28 March 2018) and Bio-Rad Laboratories, Inc. [2017] APO 38 (24 July 2017), Nick and Jeremy had fantastic success by relying on submissions that pointed to useful and material effects of the claimed invention that were not directly related to the computer implementation.

These decisions are significant as they demonstrate that even if a claim includes conventional computer features, an invention is still patentable if it can be argued that it satisfies the traditional tests for subject matter eligibility.

The inventions in each case related to ways of improving medical testing devices that relied on using a computer to implement an algorithm to set certain parameters for operation of the devices. In both cases, the examiners argued that the inventions were not patentable because they relied on routine use of computers.

In APO 24, the hearing resulted in acceptance of the application after Nick and Jeremy convinced the hearing officer that the invention resulted a reduction in the amount of testing that was needed.

In APO 38, while the hearing officer accepted that the invention could result in a reduction in the use of material during calibration, the application was returned to examination due to issues identified by the hearing officer that had not been raised in examination.  It has since been accepted by the examiner.  This appears to be the only computer implemented invention where further examination has resulted in acceptance after a hearing.

These decisions are significant as they demonstrate that even if a claim includes conventional computer features, an invention is still patentable if it can be argued that it satisfies the traditional tests for subject matter eligibility.

 “We’ve been able to show that there are circumstances where an invention is patent eligible even though the computer implementation is routine and we expect to have continued success arguing along these lines in the future,” Nick said.

Jeremy said the key thing was to make sure that it was clear in submissions what benefits the invention provides.

Please contact Nick or Jeremy if you are facing similar problems.