December 3, 2022

Australian Court and Patents for Computer-Implemented Inventions

The scorecard towards pc-applied inventions remaining patentable in Australia took another hit this 7 days when the Federal Court revoked two innovation patents from world health and fitness giant, F45 in F45 Education Pty Ltd v Physique Suit Education Business Pty Ltd (No 2) [2022] FCA 96. Justice Nicholas of the Federal Courtroom held that F45’s innovation patents, which involved a computer system-applied process for configuring and operating one or extra exercise studios, have been invalid and even if they had been legitimate, rival fitness franchise System In shape Teaching did not infringe them.

The functions did not find leave to tackle the recent choices of the Comprehensive Court docket on personal computer-carried out inventions in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 and Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223, which have been handed down after the F45 hearing experienced concluded (see our preceding articles in this article and right here).

Having said that, Justice Nicholas attained related conclusions concerning the material of the creation in the claims failing to be a manner of manufacture. His Honour identified that the patents did not offer a answer to any technological issue, nor did they symbolize an progress in laptop or computer technologies or involve any uncommon technological result due to the way in which the laptop know-how was utilised. Rather, the inventions employed generic computing technologies to deliver files from a central server to displays at different exercising stations. F45 claimed that these physical exercise stations have been demanded to be configured by humans, not personal computers, based mostly on data in information retrieved from a central server and that this resulted in the pertinent ‘physical effect’ justifying patent eligibility (i.e., that the claimed creation made an ‘artificial point out of affairs’ in compliance with the way of manufacture requirement under Australian regulation).

In distinction, Justice Nicholas determined the creation to be a laptop-implemented plan which enabled physical arrangements of training machines to be made, and that this plan was not made patent suitable just because it is carried out utilizing generic computing technological know-how. Justice Nicholas as a result ordered prices in opposition to F45.

If not presently apparent, a key observation is that the way of manufacture standard for an creation disclosed and claimed in an innovation patent specification is the very same for a normal patent, even though distinct tests on ground breaking step/obviousness may apply. Careful thought have to for that reason be taken by holders of innovation patents when thinking of enforcement of claims encompassing a computer system-applied technologies.

Notably, F45 is entitled to attraction this choice and/or could pick to investigate imposing alternative statements under divisional applications which have been filed.

Stacey White also contributed to this write-up.


Copyright 2022 K & L Gates
National Law Critique, Volume XII, Number 49