Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150
The Full Federal Court of Australia today handed down the long-awaited decision in the appeal by Research Affiliates LLC against the Federal Court’s finding that the claims of Patent Application No. 2005213293 were not patentable subject matter. The appeal was dismissed – a decision that will have great implications for the patentability of computer-implemented inventions in Australia.
In essence, the Full Court considered “whether computer implementation of an otherwise unpatentable business scheme is sufficient to make to make the claimed method properly the subject of letters patent”.[1]
The claims in question relate to generation of an index by weighting assets of a portfolio.
The positions in Europe, the UK and the United States were reviewed. The Full Court noted that the approach to patentability in Australia is considered consistent with that taken in the United States and the UK to some extent.
A distinction between the Research Affiliates invention and the contrary finding of RPL Central[2] was identified in that the computer of RPL was “inextricably linked to the invention itself”[3] whereas the method of the Research Affiliates invention was not tied to a computer in the specification.
In summary, the decision to dismiss the appeal appears to have arisen in the consideration that there “is no technical contribution to the invention or artificial effect of the invention by reason of the intervention of the inventors”.[4] The significance of the claim was found to lie “in the content of the data rather than any specific effect generated by the computer”,[5] i.e., the “substance of the invention” was found to lie in an abstract idea.
This long-standing controversy surrounding patentability of business methods looks set to continue.
[1]Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, [1].
[2] RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871.
[3] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, [98].
[4] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, [114].
[5] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, [117].