Some may remember a time when business methods were patentable subject matter, and at first glance it seems that the increasingly popular AI, ChatGPT, would like us to return to these halcyon days. When pushed, however, ChatGPT does recommend that you seek the professional advice of a patent attorney.
ChatGPT is a chatbot developed by OpenAI that uses large language models to generate dialogue in response to questions or prompts. It is currently in its research phase and you can try it for free here.
More than 1 million users trialled ChatGPT in its first 5 days and it is estimated that over 100 million users have trialled it since launch, including myself.
Language models are trained on the statistical sequences of words in published text, including text written in the past referencing superseded law. ChatGPT is thus not – fortunately or unfortunately depending on your point of view – foreshadowing a change in policy by the Australian Patent Office or providing professional advice that is likely to render patent attorneys obsolete.
Like many others, I trialled ChatGPT out of curiosity. I asked a quick series of questions with the view of seeking its limitations. Australian law on what constitutes patentable subject matter has undergone substantial change since the first of a series of Australian Full Federal Court decisions in Research Affiliates LLC v Commissioner of Patents[1] in November 2014. Asking ChatGPT to explain the law on protecting computer-implemented inventions in Australia thus seemed like a suitably challenging question.
Here is my exchange with ChatGPT:
Explain the law on protecting computer implemented inventions in Australia under Australian patent law?
In Australia, computer-implemented inventions, such as software, can be protected under Australian patent law if they meet the requirements for patentability, including novelty, inventive step, and industrial applicability. In addition, the invention must be a manner of manufacture, meaning it must result in a concrete, useful and tangible result. The protection of software-related inventions in Australia is subject to the provisions of the Patents Act 1990, which governs the grant and enforcement of patents in the country. The Australian Patent Office examines applications for patents on computer-implemented inventions to determine if they meet the criteria for patent protection.
Note that “concrete, useful and tangible result” harks back to a time following the Full Court’s judgment in Grant v Commissioner of Patents[2] when the law was fairly settled, and business methods were patentable provided a “concrete effect or phenomenon or manifestation or transformation is required”.
The concrete, useful and tangible result test, however, is a reference to the 2005 USPTO Guidelines following State Street Bank & Trust Co. v. Signature Financial Group, Inc.[3]
I then asked what is the current state of the law:
Explain the current state of patent law in Australia on manner of manufacture and protecting computer-implemented inventions?
As of my knowledge cut off in 2021, the current state of patent law in Australia regarding manner of manufacture and the protection of computer-implemented inventions is that software and other computer-implemented inventions can be protected under Australian patent law if they meet the requirements for patentability, including novelty, inventive step, and industrial applicability.
The requirement that the invention must be a manner of manufacture has been interpreted by the courts to mean that it must result in a concrete, useful, and tangible result. This requirement has been applied to computer-implemented inventions and has been used to exclude certain types of software and business methods from patent protection in Australia.
However, there has been ongoing debate and uncertainty about the extent to which computer-implemented inventions are eligible for patent protection in Australia, and the Australian government has been considering reforms to the patent system to address these issues. In recent years, there have been a number of high-profile court cases involving computer-implemented inventions, which have further clarified the legal position in this area.
Provide details of and conclusions resulting from these high-profile court cases involving computer-implemented inventions in Australia.
As of my knowledge cut off in 2021, some of the high-profile court cases involving computer-implemented inventions in Australia include:
- National Australia Bank Ltd v Commissioner of Patents [2002] FCAFC 328: This case involved an application for a patent for a computer-implemented method for processing transactions between a customer and a financial institution. The Federal Court of Australia held that the claimed invention was not a manner of manufacture and was therefore not eligible for patent protection.
- Grant v Commissioner of Patents [2006] HCA 17: This case involved an application for a patent for a computer-implemented method of enabling multiple users to participate in a single gaming experience. The High Court of Australia held that the claimed invention was a manner of manufacture and was therefore eligible for patent protection.
- Research Affiliates LLC v Commissioner of Patents [2013] FCAFC 150: This case involved an application for a patent for a computer-implemented method of constructing an index of financial assets. The Federal Court of Australia held that the claimed invention was not a manner of manufacture and was therefore not eligible for patent protection.
These cases have provided some clarity on the eligibility of computer-implemented inventions for patent protection in Australia. However, the test for manner of manufacture remains complex and difficult to apply in practice, and there remains ongoing uncertainty about the extent to which certain types of software and business methods are eligible for patent protection in Australia.
In conclusion, the eligibility of computer-implemented inventions for patent protection in Australia remains a complex and evolving area of law, and the outcomes of cases involving such inventions may depend on the specific facts and circumstances of each case. It is advisable to seek professional advice from a patent attorney to ensure that the patentability of a computer-implemented invention is properly assessed and understood.
Apart from getting the year wrong for Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, at least ChatGPT correctly referenced one of the series of Australian Full Federal Court decisions that significantly changed the law on patentable subject matter in Australia.
As you can see, the most useful piece of this advice is to seek professional advice from a patent attorney.
Update as of 14 March 2023
ChatGPT-4 was released on 14 March 2023 with enhanced capabilities in advanced reasoning, complex instructions, and more creativity. As the update occurred after I ran the above queries, I ran the final query again to see the result.
While the answer was better in that it referenced more recent and relevant case law, there are still errors. In Encompass, the invention was found to be not for a manner of manufacture. In Aristocrat, the earlier favourable decision was cited with an incorrect reference. The reference is to the appeal decision of the Full Court in 2021, which is beyond the knowledge cut-off date of ChatGPT. Also beyond the cut-off date is the ultimate High Court decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29, which highlights the need to seek professional advice.
Provide details of and conclusions resulting from these high-profile court cases involving computer-implemented inventions in Australia.
There have been several high-profile court cases in Australia involving computer-implemented inventions in recent years, including the following:
- Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 – This case involved a patent application for a method of creating a composite index using a computer-implemented algorithm. The Federal Court of Australia found that the invention was not a manner of manufacture and therefore not eligible for patent protection.
- Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 – This case involved a patent for a computer-implemented method of searching for information using a user-defined query. The Federal Court of Australia found that the invention was a manner of manufacture and therefore eligible for patent protection.
- Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2020] FCAFC 22 – This case involved a patent for a computer-implemented gaming machine. The Federal Court of Australia found that the invention was a manner of manufacture and therefore eligible for patent protection.
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[1] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150
[2] Grant v Commissioner of Patents [2006] FCAFC 120
[3] State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998)
