Thoughts on IBM case

Posted by Anton Hughes on Tuesday, July 05, 2005 with No comments
In re Schrader, a US case decided at about the same time as IBM, talks about how the Freeman-Walter-Abele test (which still lives on in the US) requires a 'technologically useful effect'. This is of course very similar to the 'economically useful effect' test set out in NRDC. Thus it would seem to be possible to interpret NRDC in a way which is compatible with US jurisprudence on software patents.
I guess my main gripe is that Burchett J, rather than making use of the attempt to distinguish between discovery and invention in the field by reference to US jurisprudence, and the practice of the Australian Patent Office, chose to rely on a 20 year old UK patent case (Re Burrough's Application) because it followed NRDC. Burchett J points out that in NRDC the court point out that the distinction between discovery and invention can be in practice difficult to determine. So his answer seems to be that it is better to just give up and take a wide interpretation of the NRDC requirements. This is why Christie & Syme declared Australia to have the most liberal test in the world for algorithm patents.
Just because a job is difficult doesn't mean that you shouldn't bother.
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