Is your computer-implemented business method patentable? The Full Federal Court dismisses Research Affiliates’ appeal

A unanimous Full Federal Court has held that a computer implemented method of creating an investment index is not patentable, on the basis that the substance of the claimed invention – an abstract idea or scheme – is itself not patentable subject matter and just because the claimed invention could be implemented using a computer does not make it patentable.

In Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (decision available here), the Full Court had to determine whether the use of a computer to implement an otherwise unpatentable business method was sufficient to render that method patentable. In finding that the use of a computer was not sufficient, the Full Court emphasised:

  1. the Court will focus on the substance of the invention when it is asked to assess whether a claimed invention is patentable.
  2. where a claimed invention is otherwise unpatentable, a computer must be important, if not integral, to the implementation of the claimed invention.

The Full Court’s decision confirms that use of a computer will not, of itself, transform an idea or method into a patentable invention.

IP Whiteboard’s James Ellsmore and Kim O’Connell have prepared an alert on the ramifications of the Full Federal Court’s decision, as well as providing a summary of the case. The alert is available here.

About the Author

James Ellsmore
James is a senior associate with King & Wood Mallesons' Intellectual Property team in Sydney. James assists clients to resolve intellectual property disputes, with a particular focus on patents, pharmaceuticals and the life sciences. He has acted for a variety of clients in matters concerning patent infringement and revocation proceedings in the Federal Court of Australia, patent opposition proceedings before the Commissioner of Patents, and matters arising from patent licence and technology agreements. James also has experience in the preparation of commercial, R&D and IP agreements for leading universities, research organisations and pharmaceutical companies. He also advises clients on regulatory issues affecting clients in the industrials, consumer and health sectors.
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