No Patent for Commercialising Inventions

Case: Invention Pathways Pty Ltd [2010] APO 10 (21 July 2010)

Delegate: Deputy Commissioner of Patents - P.M. Spann

Comment

Patentable subject matter is not to be determined merely on the presence of a physical effect resulting from the exercise of a method as claimed.  Rather, it must be an effect of such substance or quality that the method considered as a whole is proper subject matter for a patent.

Cross references in Bazpat: http://bazpat.blogspot.com/search/label/Subject%20Matter

Significant cases cited:  

• Grant v Commissioner of Patents [2006] FCAFC
• Welcome Real-Time SA v Catuity Inc [2001] FCA 445
• National Research Development Corporation v Commissioner of Patents [1959] HCA 67 (The NRDC case)
• Commissioner of Patents v Microcell Ltd [1959] HCA 71
• CCOM Pty Ltd v Jiejing [1994] FCA 1168
• International Business Machines Corporation v Commissioner of Patents [1991] FCA 625
• State Street Bank Trust Co. v Signature Financial Group Inc [1998] USCAFED 107 (US)
• Bilski v Kappos 561 U.S. (2010)
• Peter Szabo and Associates [2005] APO 24
• Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No. 2) [2007] HCA 21

Software and Innovation Patents - Tread Carefully

I recently had a client who had been told by someone that the innovation patent was a useful tool for protecting patents. There's no doubt that the system can be attractive.  See my post of 10 June 2010 and others.  Perhaps the most significant reason for that is that the innovation patent can be ready to enforce in as little as two to three months from the date of filing the application.

However, there lurks an often overlooked danger.  The innovation patent is granted and published in very little time.  In some cases, grant and publication occurs in as little as a month. This may not be an issue where an invention can easily be discerned in its commercial application.  However, software is often best kept under wraps for as long as possible, allowing the product to develop recognition and traction in the market place.  A requirement of our Patents Act is that the patent specification must disclose the best manner of performing the invention known to the applicant at the time of filing the application.  So it's not possible to get away with keeping key aspects of the invention secret if you want to file a patent application.

Standard patent applications are only published 18 months after the earliest date on which a patent application covering the invention is filed.  In the world of software, this can be a long time, allowing commercial objectives to be achieved while detail of the invention remains confidential.  However, if you've decided to go the innovation patent route, that confidential information will no longer be so in an little as a month after the application has been filed.

So, budget permitting, my recommendation is that you file a provisional patent application, get the software commercialised as soon as possible and file a standard patent application based on the provisional patent application.  If you need to enforce your rights, you can easily file a divisional application for an innovation patent based on the standard application (see my post of 21 November 2007).