Australia: the patent friendly country

Australia: the patent friendly country

This article first appeared in the March 2008, Chinese-language edition of Managing Intellectual Property. To view the original article in Chinese, click here (PDF).

Australian patent law has developed to provide a practical and relatively simple system for obtaining useful patent protection, particularly for manufactured products and information and communications technology (ICT). Whilst Europe and the US are grappling with varied decisions on the level of protection that should be afforded, and are struggling to address delays in obtaining patent grants, Australia has largely managed to avoid the difficulties and costs associated with those problems.

Firstly, Australia has adopted a relatively liberal and clear approach to the types of subject matter for which a patent can be obtained. This derives from a decision of the High Court in NRDC v Commissioner of Patents, 1959, where the Court refused to place precise limits on patentable subject matter because it felt to do so would be "unsound to the point of folly". This has allowed Australian patent law to evolve to provide patent protection for a wide range of technologies, including computer software. The Australian Federal Court has been able to affirm patent protection for a graphics processing method in IBM v Commissioner of Patents, 1991, a Chinese word processor in CCOM v Jiejing, 1994 and for a loyalty program stored on a chip card in Welcome Real-Time v Catuity, 2001.

In Grant v Commissioner of Patents, 2006, the Federal Court made it clear that a broad approach to patentable subject matter needed to be adopted in order to adapt to new technology and inventions. An invention does not have to be within an area of science or technology to be patentable, and a business method may be patentable provided it involves a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation.

On the other hand, in Europe, the UK Courts apply a restrictive approach established in Aerotel/Macrossan, 2006, and the European Patent Office applies a different restrictive approach put forward in Duns Licensing Associates, 2007. The Macrossan patent application that was rejected in the UK was allowed in Australia. The US Court of Appeals for the Federal Circuit has also recently embarked on a course of restricting patentable subject matter. The decision In re Comiskey, 2007, found that the application of human intelligence to the solution of practical problems is not in and of itself patentable, and the routine addition of electronics to an otherwise unpatentable process gives rise to a prima facie case of obviousness. Protection for an encoded signal with embedded supplemental data, being a watermark, was rejected in In re Nuijten, 2007. Signal claims of this type are currently allowable in Australia.

The examination delay in Europe and the US can also be avoided in Australia, by voluntarily requesting examination at any time. Australian Examiners operate under a customer service charter which requires them to act promptly, and a patent application can be accepted within a matter of months once examination commences, particularly if expedited examination is requested. Australian Examiners have also proved to be approachable and pragmatic to deal with during examination. Interviews are readily available, informal and useful in order to advance prosecution. The approach of Australian Examiners, in contrast to the approach taken in the US, enables the costs of prosecution to grant to be considerably reduced.

In addition to a standard patent, an innovation patent with a term of 8 years is also available in Australia for most subject matter, including software. Innovation patents are automatically granted, and can be obtained from divisional applications of standard patents. They are also available for enforcement once examined and certified.