A decade of unpredictable software patent decisions pushed Australian attorneys past complaining and into building the fix themselves.
For ten years, Australian patent attorneys advising software clients faced something close to a coin flip. Rohan Wallace, President of FICPI Australia, describes advising applicants through a stretch where identical claim strategies would clear examination one month and fail the next, with no reliable way to explain why.
That history is the subject of the first half of a two-part FICPI Focus 45 conversation on how the profession and IP Offices work together.
In Part I, Rohan speaks with FICPI Australia Secretary Ronelle Geldenhuys about a saga that ran from the Research Affiliates decision through the Aristocrat litigation to a High Court special leave refusal this March. Part II turns to the other side of the table, where Margaret Tregurtha, Acting Director-General of IP Australia, describes the same relationship from inside the office.
A test with no edges
The trouble, Rohan explains, was Australia's "manner of manufacture" test, a common law principle with roots in seventeenth-century England, applied in a way that treated almost any software claim as just a computer doing what a computer does. Purely hardware-based inventions fared better. Software struggled, however genuine the underlying advance. An x-ray machine using software to interpret what it saw was waved through as just a standard x-ray machine, regardless of what that software was doing.
Comparing notes with colleagues in the US, Europe and across Asia sharpened the frustration — the kind of exchange FICPI exists to make routine. Elsewhere, an examiner's objection could usually be met with amendments and argument on inventive step. In Australia, the same submissions did not work. For firms advising multinational clients, that gap between jurisdictions was not an abstract inconvenience. It went to what independent IP attorneys exist to do: give clients confidence in what they can protect, and where.
From frustration to a task force
What changed things, in Rohan's account, was not a single legal argument but organised, sustained cooperation. After a High Court decision split three-three (with a seventh judge absent through illness), FICPI Australia concluded that individual complaints to individual examiners were never going to move the law. So it wrote to the profession and asked who wanted to help.
Twenty-five to thirty attorneys answered within a week or two, and the Computer Implemented Invention Task Force took shape: private practice attorneys from firms large and small, in-house counsel from major filers, and representatives of AIPPI, IPTA and FICPI in the same room. Rohan is careful to explain what made the group effective. It did not just tell the office it had things wrong. It built the alternative: a proposed rewrite of the examiner's manual, backed by reasoning the office could test.
"The hardware components and the way that they interact with the software is fundamental to what the invention is," Rohan says of the test the courts eventually settled on. "It's part of the character of the invention."
What it took, and what it delivered
None of this happened quickly, and Rohan is candid that the office's first response to the Task Force's work was modest. But the pressure and the drafting kept coming, and the door stayed open on both sides. By the time the Commissioner's special leave application was refused, Rohan could point to something concrete: examiners engaging with the amended test, and, in his own words, "cases being allowed now."
"Attorneys are very conservative people," Rohan reflects, "but this is our way of pushing the margins to be active."
It is a pattern many independent practices will recognise: careful individually, but capable of moving things when they act together, especially when the group behind the case has standing.
What this means in practice
Rohan's account is a reminder that representative bodies only carry weight when practitioners turn up to do the work behind them. The Task Force succeeded because attorneys from competing firms, and in-house counsel who might never otherwise compare notes, treated a shared problem as exactly that: shared. That is exactly the kind of trusted connection FICPI exists to make possible across jurisdictions, wherever a member is dealing with an office that has drawn the line in the wrong place.
Next steps
- Read Part II, where Margaret Tregurtha of IP Australia describes what this same process looked like from the other side of the table.
- Listen to the full FICPI Focus 45 conversation with Rohan Wallace for the complete account of the Aristocrat litigation and the Task Force's work. FICPI members may view the recording of this episode from 14 May 2026.
- Audio-only versions of the episodes are available to any interested parties across major podcast platforms – search for ‘FICPI Focus 45’.
- FICPI webinars are open to any interested party. Find out what’s upcoming at: https://ficpi.org/eventstraining/upcoming-webinars
- Find out more about FICPI Australia: https://au.ficpi.org
This article was generated by AI using careful prompts from our Communications Committee, review from our IP attorney Editorial Board, and editing from our expert editor.