The patent-eligibility of a computer-implemented business method was recently before an Australian Court. The Court emphasised that mere ‘generic computer implementation’ is not sufficient to render abstract ideas patentable, but declined to provide comprehensive guidance on the patent-eligibility of computer-implemented inventions (CIIs).
In Australia:
- patent protection is available for ‘manners of manufacture’ and it is this requirement that gives rise to subject matter considerations akin to section 101 considerations in the US;
- business innovation in the form of mere schemes, intellectual information and abstract ideas has long be regarded as inherently unpatentable (regardless of how inventive or valuable that innovation might be); and
- generic computer implementation is not sufficient to turn such business innovation into (potentially patentable) technical innovation.
The borderline between (unpatentable) business innovation and (potentially patentable) technical innovation in connection with certain CIIs is a challenging area of our law. There is no clear template that can be applied to assess whether an invention in the vicinity of this borderline is patentable. Indeed, our Courts have explicitly rejected formulaic approaches to this assessment.
It was hoped that a recent decision [1] of the Full Federal Court [2] would provide guidance. Five judges, rather than the usual three, were assigned to the case and the invention was a good example of an invention in the vicinity of the borderline. The Patent Office and the Institute of Patent & Trade Mark Attorneys also weighed in with submissions.
The invention related to ‘A method displaying information relating to one or more entities [e.g. people or companies], the method including, in an electronic processing device’ performing certain steps which the Court summarised [3] in the following terms:
(a) generating a network representation by querying remote data sources;
(b) causing the network representation to be displayed to a user;
(c) in response to user input commands, determining at least one user-selected node corresponding to a user-selected entity;
(d) determining at least one search to be performed in respect of the corresponding entity associated with the (at least one) selected node;
(e) performing at least one search to determine additional information regarding the entity from at least one of a number of remote data sources by generating a search query; and
(f) causing any additional information to be presented to the user.
An apparatus, that includes an electronic processing device that performs these steps, was also claimed.
The Court affirmed the lower Court’s decision that this invention was not a ‘manner of manufacture’ and was therefore unpatentable. Unfortunately, the decision did not lay down any new statement of principle to clarify the borderline. Indeed, the Court opined [4] that:
This appeal does not provide the occasion for this Court to set out the metes and bounds of patentable computer-implemented inventions…
Whilst declining to provide comprehensive guidance, the Court commenced its ‘analysis by noting certain propositions which are not, and cannot be, in dispute’. [5] In broad summary those propositions include:
- ‘in the context of considering whether a claimed invention is a manner of manufacture, the inquiry is not into the meaning of words but into the breadth of a concept which the law has developed…’ [6]
- ‘when determining whether a claimed invention is a manner of manufacture’ the invention must be characterised ‘as a matter of substance, not merely as a matter of claim form’ [7]
- an “artificially created state of affairs of economic significance” [an oft cited passage from earlier authority] is not a definition of ‘manner of manufacture’ but may well be a sufficient formulation ‘for a large class of cases’.
The Court [8] then went on to:
- accept ‘that the method claims in suit are, in truth, no more than an instruction to apply an abstract idea (the steps of the method) using generic computer technology’;
- emphasise that mere ‘generic computer implementation’ is not sufficient to render abstract ideas patentable; and
- demonstrate the primacy of substance over form by extending the conclusion to the apparatus claims.
[1] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161
[2] The Court of first appeal for Australian patent matters.
[3] At paragraph 28
[4] At paragraph 77
[5] Paragraph 78
[6] Paragraph 79
[7] Paragraphs 80 & 81.
[8] At paragraph 99
