There is also a distinction between, on the one hand, a method involving components of a computer or machine and an application of an inventive method where part of the invention is the application and operation of the method in a physical device and , on the other, an abstract, intangible situation which is a mere scheme, an abstract idea and mere intellectual information.
Finally, in applying the law to the claims of the Research Affiliates' patent application, the Court emphasised the incidental nature of the computer concerning the invention of Research Affiliates: "It is apparent from the description in the specification that the computer is simply the means whereby the analyst accesses data to generate an index.
The work in generating the index and weighting is described in terms of the work of the analyst rather than as some technical generation by the computer.
Indeed, while the specification states that the invention may be used for investment management or investment portfolio benchmarking, the exemplary embodiment makes it clear that it may be, but is not necessarily, implemented on a computer. The Court then concluded that "In the context of the claim, the significance lies in the content of the data rather than any specific effect generated by the computer.
The computer-implementation is an essential integer of the claimed process. That is, of course, important. It is of particular importance in the assessment of, for example, novelty and infringement. However, in examining whether a claimed invention is properly the subject of letters patent, it is necessary to look not only at the integers of that claimed invention but also at the substance of that invention.
In summary, although the Court found that the present claims lacked patentable subject matter, even though they recited the use of a computer, the Court otherwise provided strong support to the patentability of computer implemented inventions.
By giving clear recognition and support to the decision of Judge Middleton in RPL Central, the Court maintained the law that where a computer is "inextricably linked with the invention itself", then claims to business methods and software are and remain patentable in Australia. Technology Sector. Intellectual Property. International Trade. Dentons on:. Sign Up Log in. It is the net effect of the combination of features that confers the advantage of the invention.
The judge said:. For example, there were, as one would expect, undoubted similarities between what computers could do or what computers were used for in December and the claimed invention. This focus on similarities does not of itself gainsay that the claimed invention solved a technical problem or involved steps foreign to the normal use of computers as at December A focus on elements known as at December in isolation tends to lose sight of the combination of techniques or components in an innovative and previously unknown way.
Furthermore, the judge rejected the argument of the Patent Office that the invention only concerned a business problem, and not a technical problem:. The invention aimed to solve this technical problem through the introduction of the engagement offer and identifying what steps the software needed to execute in order to modify dynamically the website that the user was browsing while they were browsing it to, first, implement in the web browser or device the concept of the engagement offer, second, to implement in the computer system the necessary software for selecting engagement offers and advertisements for the given user based on the previous interactions with the system and the interactions of other similar users and, third, to have that system interact with the widget in the web browser in real time.
The judge held:. The Encompass case. The software enables a user to conduct searches across multiple separate databases such as the motor vehicle registry, the land titles, and company registers.
InfoTrack successfully challenged the Encompass patents on the grounds that the alleged invention wasn't patentable. These modifications were obvious, but obviousness isn't a requirement for innovation patents. All that is required is that the modification makes a substantial contribution to the working of the invention. Applying these principles, the judge found that the inventions claimed in the Encompass patents were not eligible subject matter. Encompass filed an appeal from the decision to the Full Federal Court.
In that case, the panel of 5 judges stated at paragraph 91 of the judgement :. In each case, the Full Court was explaining that a claimed method that is unpatentable does not change its legal character merely because the method is implemented by the instrumentality of a computer. According to the Full Court, Encompass failed in its appeal because it failed to describe and claim any invention more specific than a general recipe or scheme suitable for computer-implementation.
The Court stated at paragraphs [22]-[23] of their judgment:. Thus, the entities and relationships may be of 'any appropriate form'; the network representation may be generated 'in any appropriate manner'; information can be determined 'in a number of ways depending on the preferred implementation'; for step , the representation displayed to the user by the electronic processing device 'can be achieved in any one of a number of manners'; for step , the user-selected node 'may be selected in any appropriate manner'; for step , the process of determining a search 'can be achieved using any suitable mechanism' or in respect of an example given 'achieved using any other suitable technique'; for step , the search performed by the electronic processing device 'may be achieved in any suitable manner'; and, for step , the display of additional information 'may be achieved in any suitable manner'.
At [] — [], the specification describes further 'features' of the exemplified method but, apart from disclosing other ways in which the user might choose to implement the method, is not prescriptive.
Indeed, it adopts similarly permissive language to the description given at [] — []. As acknowledged by the Full Court, the fundamental question on appeal was whether what was claimed was a mere discovery of a naturally occurring phenomenon, or a method involving a practical application that goes beyond the discovery itself.
Ariosa argued that what was claimed was a mere discovery of a naturally occurring phenomenon, 4 that being information about the DNA of the foetus 5 and so there was "no artificially created state of affairs" as required by the test under Australian law.
Ariosa sought to analogise the factual scenario in Myriad , 6 where the High Court held that a claim in relation to isolated nucleic acid comprising a mutated BRCA1 gene a gene associated with breast and ovarian cancers did not fall within the concept of manner of manufacture. As with other cases involving genetics, 7 the question of patentability turned on drawing a distinction between naturally occurring phenomena and the practical application of such phenomena.
The Full Court emphasised that: 8. Rejecting Ariosa's arguments, the Full Court emphasised that the facts here were materially different to Myriad. Most particularly because the claim in issue in Myriad was a product, not a method claim.
The Full Court considered that the invention involved the practical application of a means for identifying and discriminating between maternal and foetal nucleic acid. Rather it was the identification of that particular nucleic acid as a part of a method, 11 and this necessarily involved an artificially created state of affairs yielding an outcome that was of economic utility.
Accordingly, the Full Court concluded that the relevant claims were directed to patentable subject matter. By virtue of related patents being the subject of overseas litigation, this decision acts as a useful case study on what constitutes patentable subject matter in Australia, the UK and the US. Sequenom, Inc. Ariosa US. In Illumina , the UK court identified the relevant test as determining whether the invention claimed was a practical product or process, as opposed to information about the natural world.
By contrast, the court in Ariosa US concluded that the alleged patent in was not directed to patentable subject matter. Circuit Judge Reyna applied the test in Mayo Collaborative Services v Prometheus Laboratories , 18 which required it to determine whether the claims were directed to patent-ineligible content and, if so, whether the elements of each claim both individually and as an ordered combination had transformed the claim into a patent-eligible application.
It is worth noting, however, that though Circuit Judge Linn agreed with Circuit Judge Reyna, the former did so on the basis that his Honour felt bound by the decision in Mayo. His Honour otherwise saw:. Ariosa's challenge to infringement was limited to the primary judge's finding in relation to the 'send out' model for obtaining results from the Harmony Test. The send out model was used prior to Ariosa's licensees Sonic and Clinical Laboratories performing the test in Australia themselves, and it involved collecting blood samples from pregnant women in Australia and sending those samples to Ariosa in the US.
Ariosa would then conduct the Harmony Test in the US and provide the results, in the form of a report made available by a file sharing platform, to Sonic and Clinical Laboratories in Australia. The question of infringement turned on whether the results from the test amounted to a 'product' resulting from use of a patented method, and therefore amounted to an "exploitation" of the claimed invention under the Patents Act Cth Act.
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