In Research Affiliates LLC v Commissioner of Patents the Full Court of the Federal Court of Australia can be seen to have further consolidated the law on the patentability of business methods and software.
Research Affiliate’s claimed invention involves a new method of selecting and weighting securities for inclusion in an index, where the method is implemented on a computer.
Research Affiliates appealed the Federal Court Judge’s decision, which found the patent application to lack patentable subject matter on the basis that the physical effect criterion was not satisfied by the mere implementation of the method on a computer. While the method is ‘computer-implemented’, the method is not tied to any particular hardware or software, nor does it have any effect on the computer architecture, and the specification provided no detail of the computer implementation. Indeed, the specification even made it clear that it is not necessary to implement the method on a computer.
The Full Court Judges did not contest the inventiveness of the idea, but nonetheless concluded that the idea was no more than an abstract idea and is consequently unpatentable. The inventive steps disclosed in the specification relate to the creation of the index as information and as a scheme, and the computer implementation forms no necessary part of that. Agreeing with the primary Judge, the Full Court Judges held that mere implementation of the method on a computer is not sufficient to confer patentability.
The Judges contrasted this with the scenario in which the computer is inextricably linked with the invention itself and which thereby satisfies the physical effect criterion of patentability. The Judges noted the finding of patentability in the Full Court’s earlier decision RPL Central Pty Ltd v Commissioner of Patents as an example of a computer being an integral part of the invention. The Judges also found their approach to be consistent with the approach taken in other significant jurisdictions such as Europe, UK and the USA.
