“Software” is a broad category of innovation and, in Australia, covers both patentable and non-patentable eligible subject matter. There is no clear test for patent-eligibility; the courts have instead looked to identify the “substance” of a claimed invention (as opposed to the form of the claim) and to decide whether the “substance” is inherently patent eligible or not.
Novel software that has a “concrete, tangible, physical, or observable effect” is usually patentable—does the software result in an improvement or change to a technical process. This can be an improvement to the computer on which the software operates: for example, novel data compression algorithms are typically patentable. The effect can also relate to improved measurement or simulation of a physical system, for example, applying a novel mathematical algorithm to better interpret received sensor data.
On the other side of the coin, where the software in substance implements a novel abstract idea, such as a business method, but is otherwise implemented in a “generic” manner on a computer, it is likely to be considered unpatentable. For example, a computer implemented method for creating a securities index was found to be non-patentable.
The grey area between these extremes is, unfortunately, significant and difficult to predict in advance. Where the substance can be said to include a novel abstract idea, examiners and the courts will ask themselves whether there is some improvement or adaptation to the underlying computerisation required to implement the idea. In effect, is there also something different about the computerisation.
Applicants and attorneys who are experienced with equivalent issues in the United States and Europe can find guidance from both. A claim allowable in the US and Europe is quite likely to be allowable in Australia (there are exceptions, but this is a useful rule of thumb when making your filing decision). A claim not allowable in either is very unlikely to be allowed in Australia. A claim allowable in one but not the other may still be allowable in Australia, however, it is likely to be closer to the grey-area.
To discuss any questions you may have about filing software patents in Australia, please contact Jeremy Robinson or your usual Griffith Hack contact.