A positive sign for the patentability of computer-implemented inventions in Australia? – Patent

For the first time since the landmark Aristocrat High Court case in 2021, the Federal Court of Australia considered the patentability of a computer-implemented invention (CII). The decision provides some needed clarity and provides greater support for the position that realized inventions can be patentable subject matter.

Looking back at the Aristocrats case, the question of whether a computer-implemented invention was patentable remained unclear due to a 3:3 split in the decision. The High Court hearing considered an appeal against Aristocrat’s decision from the Full Federal Court2.

In recent3 case – Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (liability) (2022) FCA 1585 (Motorola), the Federal Court of Australia considered whether methods relating to data communications carried out on existing equipment were patentable.

In this case, Motorola Solutions Inc (“Motorola”) sued Hytera Communications Corporation Ltd (“Hytera”) and its Australian subsidiary Hytera Communications (Australia) Pty Ltd (“Hytera Australia”), which outside others claimed infringement of three of its granted Australian patents.

These patents related to technology that allowed a frequency band within the radio frequency spectrum to be divided into time slots so that more than one person could use the same channel at the same time. This technology was known as Time Division Multiple Access (TDMA).

These three patents focused on methods that improved the efficiency of the TDMA technique. The first patent, No. 2005275355 (‘355 Patent’), was a method and system that improved the time required to scan a channel to determine if there was activity on that channel. The second patent, No. 2009298764 (‘764 Patent’), was for a method for effectively synchronizing with a desired time slot, and the third patent, No. 2006276960 (‘960 Patent’), was for a method and system for accessing a base.

In its lawsuit, Motorola alleged that Hytera imported devices into Australia that infringed three patents. In a counterclaim for invalidity, Hytera argued that the patents were invalid because they were not a “method of manufacture” (ie, not subject matter eligible for patent protection) in light of the Aristocrat decision.

Hytera argued that there could be no method of manufacture where what was claimed involved only a new use of a known thing for a purpose for which its known properties made it suitable. This means that the use of a known digital mobile radio (DMR) to implement the method of steps was not a method of manufacture and therefore not patentable.

He then stated that the required methods were essentially schematics, work instructions or instructions for use rather than “improvements in computer technology”. It does not include or contribute to any new hardware or software. The patent was merely a method achieved by programming existing hardware to perform specified steps.

In considering the issue of patentability, Perram J recognized4 that it was accepted that a computer-implemented invention would be patentable if it essentially represented an improvement in computer technology rather than the use of that technology, and referred to a number of previous cases supporting this proposition. Further, Perram J stated that neither the Federal Court decision nor the High Court decision in Aristocrat departed from this position, although it was notable that the High Court decision agreed that an improvement in computer technology was not a condition of patentability.

Applying this position, Perram J rejected Hytera’s submissions, stating that the method “improves the way in which a certain class of computers – base stations and subscriber units – scan frequencies”. 5and implementation of the claimed method solved the technical problem of how to improve scan times in a TDMA communication system. As such, it was held that the claimed invention led to an improvement in computer technology and was therefore for a method of manufacture and therefore patentable subject matter.

This decision along with another recent decision at UbiPark6 provides some clarity that a computer-implemented method that constitutes a novel method, even if performed on a known piece of hardware, may be for a method of manufacture and thus patentable subject matter.

It remains to be seen whether this position will change or be further strengthened if any of these cases are appealed.


1Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (2022) HCA 29; 96 ALJR 837 – readers can view the article by my colleague Dr. Anthony Lee about this case here

2Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) FCCAFC 202; 163 IPR 231

3Please note that although this case was decided in December 2022, it was only recently made public due to the confidentiality arrangements involved

4Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (liability) (2022) FCA 1585 at (356)

5ibid (358)

6UbiPark Pty Ltd Vs. TMA Capital Australia Pty Ltd (No 2) (2023) FCA 885

The content of this article is intended to provide a general guide to the issue. Professional advice should be sought regarding your particular situation.

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