Monday, December 28, 2015

Business Method Patents In Australia

After a long delay, the Australian Federal Court (Appeals Division) has finally decided the case of Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177.  This is an appeal from an appeal from a decision by the Commissioner of Patents not to grant a patent to a method and system for computerised collection of information relevant to assessment of a person’s competency for a recognised qualification standard.

The case considered whether this invention was patentable subject matter in Australia.

The Court decided that this invention was not patentable subject matter in Australian.

"A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well- known and understood functions.

Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or wifi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?

... it is apparent that, other than the integers providing that the computer processes the criteria to generate corresponding questions and presents those questions to the user, the method does not include any steps that are outside the normal use of a computer. It is not suggested that the creation of the plurality of assessable criteria themselves form the basis of the claimed invention. They are present on the NTIS website from which they are retrieved. It is not suggested that the presentation of the questions or the processing of the user’s responses involve ingenuity themselves or that this constitutes the requisite manner of manufacture. 

We conclude that the claimed invention is to a scheme or a business method that is not properly the subject of letters patent."

See also IP Whiteboard

Personal Information

The Australian Administrative Appeals Tribunal has decided that companies who collect operational data about services they provide to individual end users, is not personal information about customers.

See Telstra Corporation Limited and Privacy Commissioner [2015] AATA 99 (18 December 2015)

Thursday, December 24, 2015

The Advocate Defames The Bank on Social Media


Michael Fraser, who goes under the name of The Advocate, operates a number of complaints-based websites, such as http://openadvicereview.com.au.  He had a big loss in court, in a defamation case brought by Commonwealth Bank.  See AFR story.

Sunday, December 06, 2015

United States Federal Circuit Judges Express Concerns for Current State of Patent Eligibility Law

There will be no en banc review of a Federal Circuit panel decision that an important medical diagnostic method is ineligible for patent protection under 35 U.S.C. 101. However, in opinions accompanying the order denying review, several Federal Circuit judges expressed concerns for medical diagnostics under the current state of patent eligibility law. Ariosa Diagnostics, Inc. v. Sequenom, Inc., Fed. Cir., No. 14-1139, 2 December 2015.

The patent at issue is directed at a process for detecting paternally-inherited fetal DNA in maternal blood samples and for performing a prenatal diagnosis based on that DNA. This method permits the diagnosis of possible birth defects without using highly intrusive measures.

The Federal Circuit panel decision acknowledged that the invention in this case revolutionized prenatal care. However, it ruled that the claimed method is patent-ineligible under Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012), because it acts on natural phenomenon with well-understood, routine, and conventional steps. In a concurring opinion, Judge Linn reluctantly agreed but only because of the Supreme Court’s sweeping and unnecessary statements about patent eligibility.

The Federal Circuit on December 2, 2015, denied the petition for en banc review.

To read the opinions accompanying the en banc order in this case, click here; to read the panel decision in this case, click here.