An ongoing issue in Australian patent law is the extent to which computer-implemented inventions are eligible subject matter for patentability.
Two single-judge Federal Court decisions on this matter have been handed down this year:
1. Justice Emmett’s 13 February decision of Research Affiliates LLC v Commissioner of Patents1 (Research Affiliates), finding that a computer implemented invention was not patentable subject matter; and
2. Justice Middleton’s 30 August decision of RPL Central Pty Ltd v Commissioner of Patents2 (RPL Central), finding that a computer implemented invention was patentable subject matter.
Today (18 November 2013) the appeal to the Research Affiliate’s decision was heard by the Full Court of the Federal Court, comprising Justices Kenny, Nicholas and Bennett. The Full Court reserved its decision. Hopefully the Full Court will provide clarity on this contentious issue. This article outlines some of the main arguments presented to the Full Court.
The Research Affiliates patent and Justice Emmett’s decision
The claim under consideration in the Research Affiliates patent is directed to a computer implemented method for generating an index in which assets are weighted.
To generate the index, the claimed method includes steps of accessing and processing data.
Justice Emmett found that the invention claimed in the Research Affiliates patent was not patentable subject matter because:3
In deciding the Research Affiliate’s claim was not directed to patentable subject matter, Justice Emmett also relied on an apparent admission by Research Affiliates that the only physical result (a necessary requirement to be patentable subject matter) generated by the claimed method is a computer file containing the index.4 Justice Emmett held that the generation of such an index was not sufficient to confer subject matter eligibility, the reasoning being that if it did then any computer implemented scheme would be patentable.5
Justice Emmett also took into account the level of disclosure of the computer-implementation in the Research Affiliates patent specification, levelling a criticism that:
While the Specification appears to be intended to create the impression of detailed computer implementation, the Specification says almost nothing about how this is to be done.6
At the hearing, Counsel for Research Affiliates argued that:
In this regard Research Affiliates submitted that contrary to Justice Emmett’s comments, it did not accept that the only physical effect produced by the claimed method was the creation of the index.
Further, they argued that if NRDC is applied correctly the steps of a claimed method should not be subdivided in order to isolate the last step as conferring the ‘physical effect’.
Counsel for Research Affiliates also directed the Full Court to several aspects of Justice Middleton’s approach to patentable subject matter in the RPL Central decision. In particular, Research Affiliates submitted that:
Counsel for the Commissioner of Patents raised two main arguments:
In response to the Commissioner’s arguments, Counsel for Research Affiliates submitted that Australian courts should be cautious in applying principles from overseas cases. Research Affiliates submitted that the Federal Court had itself noted that UK principles on patentable subject matter had developed differently to Australian law due to the influence of the European Patents Convention (citing CCOM). In relation to the US cases, Research Affiliates submitted that recent cases had not established clear guidance on computer-implemented inventions, and it was not clear which principle should apply or whether such principles were limited to the particular facts of those cases.
1.  FCA 71
2.  FCA 871
3.  FCA 71 at 72
4.  FCA 71 at 66
5.  FCA 71 at 67
6.  FCA 71 at 68
7.  102 CLR 252
The partner responsible for this area is Carl Harrap.