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Australia weighs in on software patents



Peter Leung, Hong Kong


Australia’s Full Federal Court rules that the computer implementation of an otherwise unpatentable business scheme does not make the claimed invention patentable

The Court’s decision in Research Affiliates v Commissioner of Patents, released today, stems from IP Australia’s rejection of patent applications 2005213293 (the parent application) and 2010236045 (the divisional application). Research Affiliates appealed those decisions to the Federal Court, which upheld the patent office’s ruling, and today’s decision arose from the appeal from that holding.

The claimed invention, for a method of managing investment portfolios and creating securities indexes, is described in the decision as:

[The claimed invention] provides a method of constructing data indicative of a non-capitalisation weighted portfolio of assets, the method being implemented in a computer system and comprising a series of steps commencing with the receipt in the computer system of data gathered in regard to a plurality of assets. Other aspects of the invention provide a system for constructing a non-capitalisation weighted portfolio of assets and a computer-implemented non-capitalisation weighted portfolio of assets construction system. In each case, a computer is used to receive the data and to provide “weighting means” for weighting each of the plurality of assets.

In rejecting Research Affiliates’ appeal, the Full Federal Court ruled that the claimed method is an abstract idea and that any inventive step that may be claimed is found in the creation of the index as information or as a business scheme and not in the computer implementation. The court also found that the claimed invention does not involve what would constitute an improvement in computer technology.

Interestingly, the court also examined cases from other jurisdictions, including the US Supreme Court’s ruling in Alice v CLS and Aerotel v Telco in the UK, and concluded that the claimed invention would not be patentable in those jurisdictions either.

AJL Bannon SC, Mr PW Flynn and Shelston IP Lawyers acted for Research Affiliates, while DK Catterns QC, C Dimitriadis, AR Hughes and the Australian Government Solicitor represented IP Australia.

Check back later this week for more analysis on this case.


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