In Research Affiliates LLC v Commissioner of Patents the Federal Court considered the patentability of computer implemented methods. The application claimed a computer implemented method for generating an index (for example an index of shares upon which an investment strategy may be devised or benchmarked). The method involves generating an index from gathered data that is processed in a particular way. Research Affiliates claimed that the method met the ‘manner of manufacture’ test of being an artificially created state of affairs in the field of economic endeavour.
However, the Court contested that by finding that the claim did not meet the physical effect requirement, given that the only physical effect was a computer file, and that the computer implementation did not add anything to the claim.
A mere scheme, abstract idea, or mere information, is not, of itself, patentable. Some physical effect is required. … The index is simply information: it is a set of numbers. It is no more a manner of manufacture than a bank balance, whether represented as data in a bank’s computer, written on a piece of paper or kept in a person’s memory. While it is true that the index may be stored in the computer’s RAM, or on a memory device, or can be transmitted, that can be said of any data generated by a computer. If that were sufficient to satisfy the requirement of an artificially created state of affairs, any computer-implemented scheme would be patentable, merely by reason of the fact that it happens to be implemented by a computer. … The Specification asserts a patentable invention, not in the use of a computer, but in the particular series of steps that give rise to the generation of the index. Those steps could have been carried out manually. The aspect of computer implementation is nothing more than the use of a computer for a purpose for which it is suitable. That does not confer patentability.
The Court also took issue with the lack of specific disclosure regarding how to produce the index and the stating of the data selection step in negative rather than positive terms.
