How to get a software patent in Australia

IP Australia, which administers Australia’s patents, uses Research Affiliates — Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 — to support its position on software patents.  It is an important decision for that, and also because it is by the Full Court of the Federal Court of Australia.

In my opinion, IP Australia is citing this decision against patent applications that don’t share the same or similar factual circumstances. I’m not convinced that IP Australia is always using this decision appropriately. Understanding Research Affiliates, however, should enable an Australian patent attorney to push many software patents through to grant.

Let look at the facts in more detail.  The patent application is question is AU2010236045, which has the title Valuation indifferent non-capitalization weighted index and portfolio, and relates to secularities investing and more specifically to construction and use of passive portfolios and indexes. 

At paragraph [1], the court was of the view that the case was about:

… the question of whether computer implementation of an otherwise unpatentable business scheme is sufficient to make the claimed method properly the subject of letters patent.

I’ve underlined the words “business scheme”, because I think that’s what the court had in mind — the patentability of business schemes.

At [11], the honours also stated their focus as:

…. is the fact that a claimed method to a new kind of transaction requires the use of a computer for implementation sufficient to bring it within the realm of patentability?

Right from the outset, the question being considered is really quite narrow:  Are computer implemented business schemes (or financial schemes, I guess, more specifically), patentable?

An “invention” is defined by the claims, so that is of primary interest in any application.  It’s quite a disappointing claim and very revealing:

A computer-implemented method for generating an index, the method including steps of:
(a) accessing data relating to a plurality of assets;
(b) processing the data thereby to identify a selection of the assets for inclusion in the index based on an objective measure of scale other than share price, market capitalization and any combination thereof;
(c) accessing a weighting function configured to weight the selected assets;
(d) applying the weighting function, thereby to assign to each of the selected assets a respective weighting, wherein the weighting:
(i) is based on an objective measure of scale other than share price, market capitalization and any combination thereof; and
(ii) is not based on market capitalization weighting, equal weighting, share price weighting and any combination thereof;
thereby to generate the index.

I’ve underlined the computing feature for fear that you would miss it.  That’s right — there is only a single and rather passing mention of a computer feature, and that’s mearly an assertion that the method is done on a computer.  That’s it.  No more detail.  No more explanation of how this may be achieved.

I don’t know if there is a patent attorney in Australia that would draft a software claim like this.  Unfortunately, it is a rather easy claim to attack for the lack of any significant involvement of a computer in claim 1. This theme was picked up by their Honours, who noted at [67]:

Although the summary of the invention and the exemplary embodiments do make reference to computers, it is to be noted that what is missing from the title of the invention, the described field of the invention and the detailed description of the invention is any reference to a computer, even though the claims limit the method of the invention to one that is computer-implemented.

In my view, the invention as claimed and described has only the most token mention of computers, and reading the patent specification emphasises the business scheme over the technical implementation.  Perhaps there is no more to the invention – it is no more than a calculation that is conveniently done on a computer to produce mere information.  But I would not have drafted the application to emphasis that!

Their honours make a point of highlighting this, and contrast the Research Affiliates claims with those considered in another recent decision (RPL Central Pty Ltd v Commissioner of Patents) about a computer implemented invention,

Importantly, “the involvement of the computer in the invention is described in these claims in such a manner that it is inextricably linked with the invention itself” 

I’ve highlighted this because I think it is easily missed and not many other commentators seem to have highlighted this.  In fact, if you look back at the earlier Australian decisions about software patents, this theme arises again and again.   Have a look at this post, this post, and this post for example.

In conclusion, their honours found the claims not to be patentable, noting that:

The claimed method in this case clearly involves what may well be an inventive idea, but it is an abstract idea. The specification makes it apparent that any inventive step arises in the creation of the index as information and as a scheme. There is no suggestion in the specification or the claims that any part of the inventive step lies in the computer implementation. Rather, it is apparent that the scheme is merely implemented in a computer and a standard computer at that. It is no part of the claimed method that there is an improvement in what might broadly be called “computer technology”.

That’s a pretty narrow decision based on a special set of facts.  It would appear that merely implementing an “abstract idea” on a computer is not enough, however if it is possible to argue some improvement in “computer technology”, than this hurdle should, perhaps, be easily overcome.

In my opinion, it may be difficult to use Research Affiliates to maintain a rejection against a patent application that included a significant amount of technological description in the specification and technological features included in the claims, provided that they are described to be integral to the invention.

Leave a Reply

Your email address will not be published. Required fields are marked *