Patentology - Latest Comments

Re: High Court Backs Aristocrat on Software Patentability – It’s Time for IP Australia to Follow Suit

Mark Summerfield — Mon, 16 Feb 2026 23:39:30 -0000

The task of an administrative agency - including, but not limited to, IP Australia - is different from that of a court. Courts deal with specific disputes between parties. Decisions are made to resolve these disputes based on their particular facts. In the case of disputes over patent-eligibility of computer-implemented inventions, those facts include the content of the patent specification and claims, and the identity and knowledge of the person skilled in the art who is the notional interpreter of those documents.

The court applies legal principles, including prior authorities, in order to reach its decision, but those principles are not always (if ever) crystal clear. Often they are not even explicitly stated. Consider the line of recent decisions rejecting claims to computer-implemented inventions. Judges have often not agreed on the principles to be applied, both from case-to-case, and in split decisions within an individual case. What has been extracted from these cases is essentially a laundry list of 'signposts', along with a failure to adequately recognise that the particular signposts applied in each case are closely tied to its specific facts. A unifying principle that might guide the selection in new cases was not readily discernible.

Extracting a coherent ratio decidendi from a given judicial opinion can be challenging, even for experienced judges and senior counsel. IP Australia is, however, in the unenviable position of having to provide consistent, actionable guidance to its examination corps in the hope that in any new application that comes before it, the outcome of examination will be (in principle, at least) independent of the examiner who picks up the case, since all are applying the same 'rules'.

The reason that it is appropriate for an administrative agency to consult with stakeholders is not to reach a 'consensus', or to develop practice guidelines that are intended to be anything other than a reflection of the law as it has been stated by the courts. It is because, even if we were all to agree on the law (however unlikely that might be - if we all agreed on the law there would be no disputes requiring adjudication by the courts) it is worth taking input from stakeholders on the practice guidelines.

I have no doubt that in circumstances such as these, IP Australia takes advice from experienced counsel on the law (not least, I imagine, counsel who acted for them in the Aristocrat case). But the day-to-day practical implementation of the law does not only affect examiners. Applicants and their representatives rely on the Examiners Manual to assist in predicting examination outcomes. At the very least we would like to try to obtain guidelines that everybody can understand and apply in a consistent manner, so that even if you disagree with IP Australia's interpretation of the law, you can nonetheless predict what is likely to happen when your application is examined.

Unfortunately, this has not been the case for many years now. With the Full Court now having set out some more explicit guiding principles there is a real opportunity to get the guidance 'right' - not in the sense that everybody necessarily agrees on everything. but in the sense that everybody has a common understanding of how the law will be applied in practice by the Patent Office. I think many of us can have an informed opinion on whether what goes into the Manual is clear, and whether it might have unintended or inconsistent consequences, as well as whether we think it is consistent with the law as stated by the Full Court. And it behoves IP Australia to listen to constructive feedback.

Re: High Court Backs Aristocrat on Software Patentability – It’s Time for IP Australia to Follow Suit

Dogmatix — Mon, 16 Feb 2026 19:36:32 -0000

It is a little bit curious why there is a need at all for IP Australia (IPA) to approach ‘stakeholders’. When crafting legal decision-making directions, then the only ‘stakeholder’ that matters is The Law. Every statutory decision under any provision of any Act of Parliament follows fundamentally the same legal-method-based decision making process. None of those ‘stakeholders’ they mentioned are lawmakers, and none of them have the same legally binding duties (or interests) which government agencies have (and must serve).

To the best of my knowledge, there is no law which says that those stakeholders’ states of mind, opinions, or beliefs are relevant information under s18(1)(a), or relevant to any other provision in the Patents Act for that matter. That raises big questions under the duties of impartiality, and amounts almost to abdication of accountability. Come to think about it, asking IPTA for guidance, and IPTA representing attorneys who represent applicants, ammounts to practically asking the patent applicant to tell the examiner what to do… lol

As an outsider and onlooker, I suspect statutory decision-making knowledge and skills are somewhat lacking in IPA, and if that is so then it goes a long way to explaining why the decision-making directions lead to so much uncertainty, prejudgments, and inconsistencies. Actually, as long as the same minds with the same beliefs direct and enforce decision-making practices in IPA, then it is more likely than not that the decision-making uncertainties will continue. Non-legally trained minds directing 400 legal decision makers is always, over time, going to lead to decision-making disorder and difficulties.

If statutory decision-making knowledge and skills are really somewhat wanting in IPA, then making submissions to them is likely not going to be helpful in any meaningful way…another approach to invigorate sound legal decision making in IPA has to be found…

Re: High Court Backs Aristocrat on Software Patentability – It’s Time for IP Australia to Follow Suit

Mark Summerfield — Mon, 16 Feb 2026 01:37:19 -0000

Thanks for your comment. As noted in the postscript, you are free to make a submission via MDB-QEP@ipaustralia.gov.au. I have done so, and received an acknowledgment, so I have every reason to believe that such submissions will be considered. I am also hopeful that IP Australia will publish a draft of its proposed practice for public comment (as it did following the High Court's Myriad decision in 2015). If so, that will provide a further opportunity to give feedback.

I have been informed that the 'stakeholders' IP Australia is working with include IPTA, FICPI, the Law Council of Australia, and their Patents Consultation Group (PCG). There is a CII working group formed from members of PCG/FICPI/IPTA which, I am told, has made a detailed submission.

I suspect things may move quite quickly. I don't have the capacity to host any kind of group effort here. You are currently anonymous (even to me - Disqus does not reveal full email or IP addresses of commenters), but feel free to post contact details if you want to give any interested readers the opportunity to contact you directly.

Re: Patent Filing Trends in 2025 Show Impact of AI and Continued Decline in Listed Firm Share

Mark Summerfield — Mon, 16 Feb 2026 01:16:40 -0000

Thanks Ronelle - nice pick-up!

Based on the reputation of the individual concerned, it seems wise not to trigger his Google alerts by using his name (or, indeed, any one of his names).

Although these are only provisionals at this stage, 259 applications is a significant "investment" - A$25,900 in filing fees (easy money for IP Australia). Clearly he thinks there is some pathway to making money from this. I would imagine that he is wrong, and I would hope that he will discover this during the 12-month lifetime of the provisional applications. But, as PT Barnum probably did not say , "there's a sucker born every minute", so you never know.

Re: High Court Backs Aristocrat on Software Patentability – It’s Time for IP Australia to Follow Suit

Dogmatix — Sun, 15 Feb 2026 23:13:58 -0000

Hello Mark (and readers), a few remarks follow below.

You suggested examination guidance:
E1 properly characterise the claimed invention as a matter of substance, considering all integers in combination without giving undue weight to inventive over non-inventive elements; and
E2 determine whether the subject matter is an abstract idea manipulated on a computer, or an abstract idea implemented on a computer to produce an artificial state of affairs and useful result (within the principles of NRDC).

As for E1,
what do you mean by ‘as a matter of substance’? In law generally, the substance and form doctrine simply means that a legal document (contract clause, statutory section, patent claim, etc.) must be construed according to the relevant principles, including, for example, the surrounding circumstances, such as document context, the legal purpose it serves, and so on, and not to compromise the legal effect of the legal text with irrelevant or misleading expressions which might jeopardise the text from serving its intended legal purpose. Is that the sense in wihch you use the term?

What do you mean by ‘inventive over non-inventive elements’?
In Australian patent law, there are two notions of ‘inventiveness’:
1 ‘newness’ in subject matter; and
2 ‘obviousness’, which concerns transitioning from one state of affairs to another.

Are both those notions in play? And what is the ‘relevant information’ which must be taken into account by everyone consistently? From what I have seen, patent examiners use evidence internal to the specification, external to the specification, personal beliefs about what is well known even without documentary evidence, etc., basically just making it up as necessary to object.

As for E2,
this expression ‘an artificial state of affairs and useful result’ looks a bit tautologous. A ‘useful result’ in a patent law sense is actually defined in terms of an ‘artificially created state of [physical] affairs in a field of economic endeavour’. So that expression would read ‘an artificial state of affairs and an artificial state of affairs in a field of economic endeavour’.

Also, the material fact ‘new’ does not appear in E2. Is that because it is encapsulated in E1, and if so, how do E1 and E2 relate to each other in practice? How do they work together?

Moreover, the above test is defined in a ‘technologically bounded’ manner. In other words, that test would require that a decision maker must first, as a precondition, decide if the situation concerns ‘computer-implemented inventions’ before applying the test. That question, “Does the ‘patent application’ belong to the ‘computer-implemented inventions’?”, is one of the few main issues which contributes to decision-making uncertainty under 18(1)(a) in the patent office.

The directors in the patent office enforce a similar practice, in which acceptance delegates must make a judgment call to classify a patent application either as ‘consider 18(1)(a) further’ or ‘not to bother further with 18(1)(a) at all’, based on… well, no one really knows.
From discussions with patent examiners and directors, it appears to be a kind of ‘thematic judgment’, in which the ‘theme’ of the application as a whole is considered. Note I say ‘application as a whole’ (not specification or claim alone). In practice, in the patent office, all kinds of information influence that prejudgment classification. And, that information is in no way limited to the concept defined by the claim. It includes subjective discretions based on past experience and analogous perceptions, supervisor’s discretions, section group dispositions, which examination section the application is allocated to, the IPC class marks, the impression of the description and drawings, even objections under other sections, such as 40(2) and 40(3), influence that judgment, and, and, and…, and ultimately a highly subjective impression is formed for making the classification to either consider 18(1)(a) further or not to bother further with 18(1)(a) at all.

In addition, there is an extremely strong adversarial mindset encouraged, an us-against-them culture, and expressions like ‘If in doubt, object’ are commonly advocated, and delegates are less likely to be written up for poor quality and underperformance if they object than if they do not, etc. So, once a prejudgment is made that a ‘patent application’ belongs to the ‘computer-implemented’ class, an objection is almost certain.

To enable backing of that prejudgment, the approach to constructing a ‘statement of reasons’ includes prescribing a blob of partially constructed boilerplate text, the construction of which is completed simply by:
declaring any contents in the claim which are abstract (intransitive, intangible, disembodied, incorporeal, mental, etc.) as ‘where the ingenuity lies’; and
declaring anything concrete (physical, transitive, tangible, embodied, corporeal, material (in the physical sense), substantial (in the physical sense), etc.) as ‘non-contributing to the ingenuity’.

The High Court has long cautioned against rules which are bounded by technology. In any event, as you pointed out as well, “….Computer-implemented inventions (not a new class…)”, there is no need for a thematic prejudgment. Instead, the decision maker is supposed to stick to the claim, follow a consistent decision-making process for each claim of each patent application regardless of the field of technology, using the High Court ratio (which is not technologically bounded).

The only time where an ‘aboutness’ or ‘thematic’ consideration matters without embarking on the statutory decision-making process fully is when the claim relates to a hard policy exclusion.

Come to think of it, even if the prejudgment classification, to either consider 18(1)(a) further or not to bother further with 18(1)(a) at all, is made based solely on the concept defined by the claim, it still runs into practical difficulties. For example, if the claim includes both computer-related and other, say mechanical, features, how is the claim to be classified then? Do the rules apply to one part of the claim and not to the other part? It does not work.

The solution is simple. Embrace the rule of law properly and drop the prejudgment nonsense. A claim must be characterised in terms of the High Court ratio, which provides all the necessary and sufficient characteristics which a claim can and must possess, and this can be done by following a consistent and eloquent process which the High Court has also provided over many, many years, and which is untainted by litigators’ submissions muddling the principles to serve their clients’ interests more than anything else.

If the readers are interested, and you Mark, are OK with it, then I can try to knock up a draft decision-making process firmly based on the High Court ratio, clearly showing the possible, necessary, and sufficient claim characteristics, and share it here as a starting point for comments. If we all put our minds together and knock up a justified, clear, and consistent decision-making process, then almost certainly the patent office will be open to considering it.

Re: Patent Filing Trends in 2025 Show Impact of AI and Continued Decline in Listed Firm Share

Ronelle Geldenhuys — Thu, 12 Feb 2026 21:07:25 -0000

Mark, you may or may not find this as interesting as I did:

(1) Nuwey's 158 are actually Doug's 259 applications, if you add the other 100 filed last month. (Some different names for inventor, applicant, agent - it's all over the place, but the same)

(2) https://www.propertyinvesting.com/topic/4388429-anyone-heard-of-this-company-called-nexplan/

(3) Given his apparent reputation, it will be interesting to see who he convinces to buy a patent portfolio for the operating principles of “governed physical systems” (whatever that is)

(4) So I think the take away here might be that AI opens many doors for bad actors, and that the patent system has not necessarily been overrun by overzealous inventors.

Re: High Court Backs Aristocrat on Software Patentability – It’s Time for IP Australia to Follow Suit

Mark Summerfield — Mon, 09 Feb 2026 18:40:47 -0000

You're welcome, Justin. Thanks for reading!

Re: High Court Backs Aristocrat on Software Patentability – It’s Time for IP Australia to Follow Suit

Justin Simpson — Mon, 09 Feb 2026 18:10:42 -0000

Hallelujah! This has been a long time coming. Thanks Mark for the lucid summary and challenge to IPAustralia to align its manual with this decision. Nice work!

Re: Patentology: ‘Evergreenwashing’ the Pharmaceutical Patents Review

vansika rani — Thu, 23 Oct 2025 11:40:01 -0000

Great articles

Re: Patentology: ‘Evergreenwashing’ the Pharmaceutical Patents Review

vansika rani — Thu, 23 Oct 2025 11:39:47 -0000

Great article

Re: How Attorney Firms are Benefiting from an Australian Patent Examination Backlog

Mark Summerfield — Fri, 17 Oct 2025 01:42:29 -0000

That might explain AU provisional filings, but this analysis only looks at standard (direct and PCT NPE) filings.

Re: How Attorney Firms are Benefiting from an Australian Patent Examination Backlog

Joe Spingoli — Fri, 17 Oct 2025 00:26:20 -0000

I wonder if the attractiveness of having the PCT type search done by IP Australia is behind that?

Re: How Attorney Firms are Benefiting from an Australian Patent Examination Backlog

Mark Summerfield — Thu, 16 Oct 2025 19:23:21 -0000

Thanks for your comment, Joe. I did not include NZ filing and prosecution data in this analysis, though I suspect it would show similar patterns. Interestingly, the NZ firm you are referring to significantly increased its Australian filings following acquisition, up until FY2022, but has slightly declined again since then. Even so, it is the only IPH firm not to have experienced a substantial net decline in Australian filings since acquisition.

Re: How Attorney Firms are Benefiting from an Australian Patent Examination Backlog

Joe Spingoli — Thu, 16 Oct 2025 17:44:09 -0000

In New Zealand, the largest IPH firm has been haemorrhaging staff, including senior staff that were involved joining IPH. Rumours are rife about the reasons. There is a now an ever growing group of in-house patent attorneys, which notably, the largest IPH firm in New Zealand is trying to cosy up to (no doubt in an attempt to get back some of the work they lost).

Re: Former Patent Examiner Takes IP Australia to Federal Court Over Alleged ‘Abusive Management Practices’

Roger Green — Sun, 29 Jun 2025 06:56:41 -0000

This reminds me of Arthur Pedrick, a UK patent examiner, who filed several wacky patent applications after his retirement from the Patent Office. My favourite was his combined cat flap and thermonuclear device

Re: Former Patent Examiner Takes IP Australia to Federal Court Over Alleged ‘Abusive Management Practices’

Mark Summerfield — Tue, 10 Jun 2025 19:57:02 -0000

That is interesting, though of course it would be purely speculative to infer a direct connection between the two events.

This did, however, remind me of a relatively obscure provision of the Patents Act 1990. Section 182 prohibits an employee of IP Australia from buying, selling, acquiring or trafficking in an invention or a patent, or a related right or licence. Fortunately for Mr Liebenberg, subsection (3) exempts an inventor from this prohibition. While I can see the rationale for this exemption - it could be seen as unfair to bar a person from accessing benefits of the IP rights system on the basis of their employment - it does not obviate the inherent conflict of interest that the provision is intended to address. If anything, quite the contrary I would have thought.

In the US, 35 U.S.C. § 4 prohibits all officers or employees of the USPTO 'during the period of their appointments and for one year thereafter' from applying for or acquiring a US patent, or any right or interest in a US patent (except in limited circumstances).

Re: Former Patent Examiner Takes IP Australia to Federal Court Over Alleged ‘Abusive Management Practices’

Guest — Tue, 10 Jun 2025 18:50:01 -0000

Interestingly, Mr. Liebenberg seems to be inventor of AU Innovation Patent 2021107326. This was filed in 2021, the same year his dispute with IPAustralia started.

Re: NZ Patent Law Amendments Target Extinction of 82 ‘Dinosaur’ Applications

Doug Calhoun — Sun, 25 May 2025 23:08:59 -0000

The bill is about to be passed under urgency with no further input. The initiative came from Nicola Willis (Minister for Economic Growth, as well as Finance) as one of many bills passed along with the various finance bills so that it was mostly hidden. My guess is that when she told MBIE she needed some runs on the board, this was to only one that was padded up. The departmental statement published along with the bill acknowledged the that there were only "about eighty" dinosaur applications left - but whoever reads those things except for patent tragics.

Re: NZ Patent Law Amendments Target Extinction of 82 ‘Dinosaur’ Applications

Andrew — Tue, 25 Mar 2025 20:35:45 -0000

In theory, but in practice making changes to a Statute can't be done by flicking a switch at MBIE. Nor can it be retrospective. There will always be an 'on notice' period, and we are in it now.

If I were advising an applicant of a pre-acceptance PA1953 case I wouldn't be waiting to file a divisional for too long if that was the recommended strategy.

Re: NZ Patent Law Amendments Target Extinction of 82 ‘Dinosaur’ Applications

Mark Summerfield — Tue, 25 Mar 2025 20:24:19 -0000

All good points, Andrew. Of course, one possible response to the objection that the three month transition period may have unintended consequences, or fail to meet the policy objective, would be to remove it and have the changes take effect immediately!

Re: NZ Patent Law Amendments Target Extinction of 82 ‘Dinosaur’ Applications

Andrew — Tue, 25 Mar 2025 20:12:01 -0000

Well, MBIE have invited submissions on whether the language in the Exposure Draft "achieves the policy intent". That does leave open the question of what is actually the intended policy?

As far as I can ascertain that has never been articulated, beyond the original desire to address the concerns of FPH (primarily). Those concerns were to stop daisychaining, and perpetuating PA1953 standards for examination, opposition and revocation. Since that time, the number of PA1953 applications has dropped from ~770 to ~80 without legislative reform.

And even still, given the 3 month period transitional period during which applicants will preload PA1953 divisional apps, does the language achieve the/any policy intent?

I say no, at least not without detracting from or delaying other more worthwhile policy changes originally discussed. Poisonous priority/divisional/WOC anyone?

Re: NZ Patent Law Amendments Target Extinction of 82 ‘Dinosaur’ Applications

Mark Summerfield — Tue, 25 Mar 2025 19:40:41 -0000

Thanks for your comment, Joe. It seems that you are right - see Doug Calhoun's comment for some additional background.

Re: NZ Patent Law Amendments Target Extinction of 82 ‘Dinosaur’ Applications

Mark Summerfield — Tue, 25 Mar 2025 19:39:12 -0000

Thanks for the additional background, Doug. It certainly explains why Resmed is the most prominent among the remaining 1953 Act applicants!

I am in two minds about whether to make a submission of my own, pointing out the negligible size of the 'problem'. It appears that comments are only being solicited on the effectiveness of the drafting to achieve the stated policy objective, in which case questioning the objective itself is probably a waste of time. But I appreciate that you have had a tilt at it, all the same!

Re: NZ Patent Law Amendments Target Extinction of 82 ‘Dinosaur’ Applications

Doug Calhoun — Tue, 25 Mar 2025 18:51:26 -0000

Hi Mark,

I agree wtih all that you have said. On Monday I filed a submission to MBIE. The gist of it was:

. - This draft bill had its origin in 2016 when MBIE policy advisors decided that the system was being gamed by 1953 Act applicants filing daisychained divisional applications. This was as a result of a complaint by Fisher & Paykel Healthcare that they were involved in 29 oppositions. What FPH did not mention was that they in a global patent battle at the time with ResMed. Peace broke out in 2019 and the litigation was settled, although some oppositions continue. Another rationale in 2016 was that IPONZ would need to keep a cohort of examiners able to examine under the 1953 Act. (How hard could it be not to examine for obviousness?) My submission was that this proposal to stamp out daisychaining has itself been daisychained twice in the last 9 years and is well past its use by date.

. - The next chapter in the saga was a 2020 cabinet paper that recommended some substantive and some technical changes to the 2013 Act along with the proposals in the current draft bill. All of the forward looking amendments were not included. Why not?

- Maybe the explanation is found in the science review currently in progress. It proposes structural changes to be driven by the government's desire to get more bang for its buck. Among the actions in a cabinet paper released on 23 January were for the two relevant ministers to propose changes to the IP "settings" to achieve this. Shortly after the announcement both the ministers were replaced by ministers with no apparent IP experience. With this bill they are not off to a good start. Or else they didn't get the memo!

Re: NZ Patent Law Amendments Target Extinction of 82 ‘Dinosaur’ Applications

Joe — Tue, 25 Mar 2025 18:43:34 -0000

"I cannot help thinking that this tiny number of 1953 Act dinosaurs still quietly roaming the New Zealand Patent Office is looming far larger in somebody’s consciousness than is really justified."

You are absolutely correct. Having worked at IPONZ, I can guarantee you that government ministers wouldn't care less about this so-called problem, let alone even understand it.

This will all be down to some policy wonk at MBIE not liking what they see as gaming the system, when of course it's not such thing.