Computer Implemented Business Scheme not Patentable in Australia

Date: 2014-11-10
Authors: Carl Harrap & Stuart Irvine

A Full Court of Australia’s Federal Court has handed down its appeal decision in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150.

This decision (here) deals with the patentability of computer implemented inventions in Australia, and in particular inventions which relate to computer implemented business schemes.  In essence, the claims in question are directed to a method involving accessing data relating to assets, processing the data, and generating an index. The index was asserted to be usable to generate and maintain a portfolio of assets or in benchmarking an investment portfolio manager.

In a joint judgement, the Court held that the claims in question were not patent eligible – or, in Australian terms, not a manner of manufacture.

In reaching this conclusion the Court held that the assessment of subject matter eligibility is not based solely on the integers of a claimed invention, but on “the substance” of the invention.

With this in mind, the Court decided that although computer implementation was essential to the claimed process, the “invention” was in the creation of the index itself and not in the computer implementation:

The claimed method in this case clearly involves what may well be an inventive idea, but it is an abstract idea.  The specification makes it apparent that any inventive step arises in the creation of the index as information and as a scheme.  There is no suggestion in the specification or the claims that any part of the inventive step lies in the computer implementation.  Rather, it is apparent that the scheme is merely implemented in a computer and a standard computer at that.  It is no part of the claimed method that there is an improvement in what might broadly be called “computer technology”.

It is not immediately clear how far reaching (or otherwise) this decision will be. In the opening paragraph of the decision the Court summarised the question to be:

…whether computer implementation of an otherwise unpatentable business scheme is sufficient to make the claimed method properly the subject of letters patent.

Presumably, therefore, the decision will be of limited relevance to the computer implementation of something that is not “an otherwise unpatentable business scheme”. This is perhaps reflected in the Court’s acknowledgement that many methods that are inventive uses of a computer that utilise previously unknown abilities of software and hardware should be patentable.

Further comments on the decision will be published in the near future.