Background to software patenting in Australia

For many years, up to the late 1980s, the Australian Patent Office (APO) routinely rejected patent applications involving computer software. Since Australian practice was diverging from the more liberal practices which were emerging in other countries, particularly in the USA, in March 1986 the APO published a new set of guidelines: Guidelines for Considering the Patentability of Computer Program Related Inventions. These guidelines incorporated the test developed by the US courts, known as the two part Freeman-Walter-Abele test (J. Swinson, 1993), the application of which subsequently led to the APO granting a number of software related patents (D. Webber). The question of whether computer software related inventions constitute a “manner of manufacture”, as required by the Patents Act 1990 and are therefore patentable subject matter, first came before an Australian court in 1992 and a patent was granted. Following this decision in IBM, in August 1992, the APO issued new guidelines for determining the patentability of software related inventions. The new test simply poses the question: “does the invention claimed involve the production of some commercially useful effect?” Examiners are directed not to object to applications on the basis of the earlier US authorities which were adopted in the 1986 APO guidelines. Illustrations of the test are provided in the Patent Office Guidelines (1992)