Australia: Patent Office guidelines for computer implemented inventions

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Australia: Patent Office guidelines for computer implemented inventions

Following on from recent Patent Office success in courts in rejecting business method patents, the Patent Office has released new guidelines on the patentability of computer implemented inventions.

While the court authorities are on appeal, the Office has proceeded to issue the guidelines to align practices with its preferred position, which was adopted by a recent Full Federal Court decision. The new guidelines appear to centralise power with the Office in adopting an approach that the Office will "go beyond the form of words used". The Office will be allowed to allege the "substance of the alleged invention" is a scheme even where the claims define a physical product.

The list of factors the Office will take into account are many and varied, and appear to leave a wide discretion to the Office, in the rejection or acceptance of patent applications. Factors include whether the "contribution" is technical in nature and whether the method "merely requires a generic computer implementation". The guidelines appear to be driven by the Office's desire not to consider business method innovations as worthy of protection. No consideration of the need to protect this area of innovation appears to have been given. There also appears little chance of legislative change in the foreseeable future.

Overall, there is a necessity for applicants to carefully consider the drafting of their patent applications in order to minimise the opportunities for the Office to reject an applicant's innovative endeavours as being too "business method" in nature. Through careful drafting, applicants may be able to negate the Office's wide discretion.

treloar.jpg

Peter Treloar


Shelston IPLevel 21, 60 Margaret StreetSydney NSW 2000, AustraliaTel: +61 2 9777 1111Fax: +61 2 9241 4666email@shelstonip.comwww.shelstonip.com

more from across site and SHARED ros bottom lb

More from across our site

The firm said major IP developments included advising on a ‘landmark’ deal involving green hydrogen production, as well as two major acquisitions
The appointments follow other recent moves in the European market as firms look to bolster their UPC offerings
Deborah Kirk discusses why IP and technology have become central pillars in transactions and explains why clients need practically minded lawyers
IP STARS, Managing IP’s accreditation title, reveals its latest rankings for patent work, including which firms are moving up
Leaders at US law firms explain what attorneys can learn from AI cases involving Meta and Anthropic, and why the outcomes could guide litigation strategies
Attorneys reveal the trademark and copyright trends they’ve noticed within the first half of 2025
Senior leaders at TE Connectivity and Clarivate explain how they see the future of innovation
A new action filed by Nokia against Asus and a landmark ruling on counterfeits by South Africa’s Supreme Court were also among the top talking points
Counsel explain how they’re navigating patent prosecution matters and highlight key takeaways from Federal Circuit cases
A partner who joined Fenwick alongside two others explains what drew her to the firm and her hopes for growth in Boston
Gift this article