Last Monday, 18 November 2013, I attended the Full Federal Court hearing of Research Affiliates’ appeal against the decision of a single judge of the court earlier this year to uphold the Australian Patent Office’s rejection of its patent applications relating to the construction and use of passive portfolios and indexes for securities trading.
The parties to the hearing were (of course) Research Affiliates, LLC and the Commissioner of Patents. The three judges on the Full Bench were Justices Bennett (best known for presiding over the Australia Apple v Samsung litigation), Kenny and Nicholas.
The sole issue in the appeal is whether or not Research Affiliates’ patent claims, directed variously to computer-implemented methods and computer systems for ‘generating an index’, define patent-eligible subject matter (i.e. a ‘manner of manufacture’ under Australian law). It has not been contended by the Commissioner of Patents that the claims lack novelty or an inventive step, or that the patent specification is deficient in any other way.
The patent-eligibility of so-called ‘business methods’ – including, but not limited to, processes implemented with the aid of computer software – is a contentious issue in many jurisdictions, including Australia. There is arguably an emerging consensus that methods of organising human affairs which involve only the manipulation of legal or financial instruments, without technological assistance, are not generally eligible for patent protection, even in those countries with a liberal approach to patentable subject matter. However, when technical means are employed, typically in the form of a programmed computer, in the implementation of an otherwise unpatentable process, the position remains unresolved.
The Full Court will need to tackle this issue head-on in the Research Affiliates case.