It is possible that the court was waiting for the US Supreme Court to rule in Alice v CLS Bank before finalising its opinion(s) in Research Affiliates. Whether or not that is the reason for this long delay, the fact is that Alice has been decided, and it is therefore almost inconceivable that the judges in the Australian case would not review the US decision and assess whether there is any aspect of the reasoning that may be applicable in Australia.
So, is there?
I am sure that some will disagree with me, but I think that maybe there is – despite significant differences between the US law on patent-eligibility (based on 35 USC §101) and that of Australia (based upon the venerable test of ‘manner of manufacture’). While the legal criteria may be different, you would have to postulate that the purpose of the patent systems in the two countries was manifestly dissimilar for the actual outcomes of applying the criteria to produce significantly different results.
The Full Court has itself said as much, in Grant v Commissioner of Patents  FCAFC 120, at :
While the development of US patent law is derived from the Constitution of the United States rather than the Statute of Monopolies … the policy behind the two provisions is the same. In both jurisdictions, the courts have confirmed that a broad approach to subject matter should be taken in order to adapt to new technologies and inventions but that does not mean that there are no restrictions on what is properly patentable.
So what might the Full Court take from Alice, and how might it apply the US reasoning under the Australian ‘manner of manufacture’ test?
The US FrameworkAs I have previously explained, the ‘framework’ for assessing patent-eligibility that was confirmed by the Supreme Court in Alice involves a two-step test:
- determine whether the claims at issue are directed to a patent-ineligible concept (i.e. a law of nature, natural phenomenon or abstract idea); and
- if so, inquire as to whether there is something else in the claims, considering the elements of each claim both individually and as an ordered combination, sufficient to ‘transform the nature of the claim’ into a patent-eligible application of the ineligible concept.
Research Affiliates Under the US FrameworkA key claim at issue in the Research Affiliates case recites the following:
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; andthereby to generate the index.
(ii) is not based on market capitalization weighting, equal weighting, share price weighting and any combination thereof,
If a US court were considering this claim, it would apply the framework set down by the Supreme Court. The claim as fairly clearly drawn to something that the Supreme Court would regard as the ‘abstract concept’ of creating an index, i.e. a selection of assets, each of which has an associated weighting (the point being that, if the selected assets are purchased in proportion to the weighting values, the result will be a portfolio whose value will be tracked by the index). The novelty-conferring feature of the claim is that the assets are selected and weighted according to unconventional criteria.
It is also fairly certain that, faced with this claim, the US Supreme Court would have found, as in Alice, no more than an instruction to apply the idea of generating the index via a ‘generic computer implementation [which] fails to transform that abstract idea into a patent-eligible invention.’
Can The Alice Principles Be Applied in Australia?On the face of it, however, it might be argued that the Supreme Court’s framework is not applicable under the Australian law of ‘manner of manufacture’.
The leading decision on the ‘manner of manufacture’ test remains that of the High Court in National Research Development Corporation v Commissioner of Patents  HCA 67 (‘NRDC’), in which the court stated (at ) that:
There may indeed be a discovery without invention - either because the discovery is of some piece of abstract information without any suggestion of a practical application of it to a useful end, or because its application lies outside the realm of "manufacture". But where a person finds out that a useful result may be produced by doing something which has not been done by that procedure before, his claim for a patent is not validly answered by telling him that although there was ingenuity in his discovery that the materials used in the process would produce the useful result no ingenuity was involved in showing how the discovery, once it had been made, might be applied. The fallacy lies in dividing up the process that he puts forward as his invention. It is the whole process that must be considered…
So if the Supreme Court is understood to be dividing the claim into patent-eligible and patent-ineligible parts, and then assessing the ‘contribution’ of the eligible parts alone, in order to arrive at a final determination of eligibility, then this would seem to be inconsistent with Australian law.
There are, however, two important points to be made about the Supreme Court’s approach. First, it has not ruled for such a simple division of content – as noted above, the second step of the framework requires consideration of the claim elements ‘both individually and as an ordered combination’.
Second, the Supreme Court has articulated a broader principle underlying its eligibility framework:
We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., [Bilski v Kappos], at 611–612 (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”). Laws of nature, natural phenomena, and abstract ideas are “ ‘ “the basic tools of scientific and technological work.” ’ ” [Association for Molecular Pathology v Myriad Genetics, Inc] (slip op., at 11). “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. [Mayo Collaborative Services v Prometheus Laboratories, Inc]
The Australian Court could take from this a principle that is not so clearly inconsistent with NRDC, i.e. that a claim for nothing more than ineligible subject matter that has merely been clad in a veneer of eligibility but which, as a practical matter, nonetheless effectively monopolises the underlying idea, should not, as a mater of policy, be carried over the ‘manner of manufacture’ threshold.
A balancing principle is also to be found in Alice: ‘…we tread carefully in construing this exclusionary principle lest it swallow all of patent law’; ‘[a]t some level, “all inventions … embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas”. … an invention is not rendered ineligible for patent simply because it involves an abstract concept’; ‘we must distinguish between patents that claim the [building blocks] of human ingenuity and those that integrate the building blocks into something more’.
Conclusion – How Might the Australian Court Decide?If the Full Court can find a way to apply a principle of ‘pre-emption’ without allowing it to ‘swallow all of patent law’, in a manner that is not obviously inconsistent with NRDC, then it could quite conceivably align the Australian law of patent-eligibility quite closely with that of the US, despite the quite different sources of law in the two countries.
I have previously stated (quite strongly) that IP Australia was wrong to have rejected the Research Affiliates applications in the first place. My reasoning was based upon the Full Federal Court’s approval (in the Grant case) of the US Court of Appeal for the Federal Circuit (CAFC) decision in State Street Bank & Trust Co. v Signature Financial Group 149 F. 3d 1368. I still think that is correct – IP Australia was bound to follow the guidance of the highest relevant authority at the time, and on this basis I believe it reached an incorrect conclusion in view of Grant.
However, the Full Court is not so strictly bound by its own previous decision, particularly given that its approval of State Street was not part of the ratio decidendi in Grant (that is legal-speak for the core legal principle upon which the decision was based). Since the Grant judgment in 2006, the US Supreme Court (in Bilski) expressly declined to endorse the reasoning applied by the CAFC in the State Street case, and has since issued further decisions on patent-eligibility in Mayo, Myriad and Alice. The Full Court would be perfectly entitled to revise its earlier views on State Street in light of these developments.
But even if the Full Court adopts a ‘pre-emption’ principle in Research Affiliates, that would not necessarily determine the outcome. While it seems likely that the US Supreme Court would consider Research Affiliates’ generation of an index to be an unpatentable ‘abstract concept’, it is less clear that this underlying invention is itself ineligible for patent protection in Australia. If the court considers the index generation method to be a patentable ‘manner of manufacture’, then it will not cease to be so just because it is implemented via computer software.
Hopefully we will not have to wait too much longer to find out.