Research Affiliates LLC v Commissioner of
Patents  FCAFC 150
On 10 November 2014, the Australian Full Federal Court (Court)
held that a method of creating an index of securities using a
standard computer was a 'scheme', and hence, not a
patentable invention within section 18(1)(a) of the Patents Act
The Court applied the Australian High Court test from National
Research Development Corporation v Commissioner of Patents
(1959) 102 CLR 252 that a patentable invention must produce an
"artificially created state of affairs". The Court said
that this test is not satisfied by mechanistic application of
artificiality or physical effect, but by understanding the claimed
invention as a matter of substance not form.
The Court viewed the claimed invention in this case as not
having any 'artificial effect' other than the
implementation of a scheme, which happened to use a computer for
that implementation. Although the claims required computer
implementation, the significance lay in the content of the data
rather than any specific effect generated by the computer.
In substance, the Court viewed the claimed method as clearly
involving an abstract idea. Any inventive step arose in the
creation of the index as information and as a scheme. There was no
suggestion that any inventive step lay in the computer
implementation. Rather, the claimed method was a scheme merely
implemented in a standard computer. No part of the claimed method
involved an improvement in what might broadly be called
Authority Abroad and at Home
Before reaching its decision, the Court reviewed the patentability
of computer-implemented business methods in other jurisdictions.
The Court noted that its decision was consistent with the reasoning
in the line of cases culminating HTC Europe Co Ltd v Apple
Inc  RPC 30 in the United Kingdom, and in Alice
Corporation Pty Ltd v CLS Bank International 134 S Ct 2347
(2014) in the United States.
Consistent with the position in the United States and Europe,
this decision clarifies that computer-implemented business methods
are patentable in Australia if, in substance, they produce an
'artificial effect' that goes beyond mere implementation of
an abstract idea or scheme in a generic computer.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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