In the first published decision by the Australian Patent Office for 2014, Aqua Index Ltd  APO 2 (‘Aqua Index’), the Delegate of the Commissioner of Patents has refused yet another patent application for not being patentable subject matter. This is the latest in a string of decisions refusing applications over recent years, some of which are currently on appeal to the Federal Court.
The decision suggests that the current approach of the Australian Patent Office for evaluating whether an invention is patentable subject matter is to refer to the authority with the closest matching invention and level of detail in the patent specification’s description of computer implementation and apply the outcome of that case.
The invention in issue in Aqua Index was a system that included a processor configured to determine the index value of water based on a value of least one other commodity that used water in its production or is constituted by a quantity of water. The claimed processor was configured to update the index value based on updates in the value of the commodity.
The Delegate acknowledged that there are two recent cases binding on him: Research Affiliates LLC v Commissioner of Patents  FCA 71 (13 February 2013) and RPL Central Pty Ltd v Commissioner of Patents  FCA 871 (30 August 2013). We have reported on these cases previously: Research Affiliates, RPL Central and also reported on the hearing of the appeal in Research Affiliates.
In brief, in Research Affiliates the Federal Court considered an invention for generating an index in which assets are weighted. The Court found the claimed invention to not be patentable subject matter. In RPL Central the Court reached the opposite view when considering a computer-implemented method for gathering evidence relevant to an assessment of an individual’s competency relative to a recognised qualification standard. Both the Research Affiliates and RPL Central cases are first instance decisions, and both have been appealed to the Full Federal Court.
The Delegate formed the view that the invention in Aqua Index was of the same nature as the invention considered in Research Affiliates, and held that he need not go further to resolve any contradiction that there may be in the authorities. In particular, the Delegate considered that both inventions concerned generation of an index and that the patent specification of Aqua Index was similar to the specification in Research Affiliates in that it contained virtually no substantive detail about how the claimed method was to be implemented by a computer.
In reaching his conclusion the Delegate appears to have adopted an approach of looking beyond the claims in order to ascertain an underlying invention. This is suggested by comments of the Delegate including “Fundamentally, the invention lies in …” and “what is in substance claimed amounts to…” (emphasis added). The Delegate here seems to be preferring the approach from Research Affiliates, in which Emmett J held:
The implementation of the method of the claimed invention by means of a computer… is no more than the modern equivalent of writing down the index on pieces of paper. On the face of the Specification, there is no patentable invention in the fact that the claimed method is implemented by means of a computer. … The aspect of computer implementation is nothing more than the use of a computer for a purpose for which it is suitable. That does not confer patentability.
This aligns with the position that the Commissioner has taken in the appeal on Research Affiliates, during which counsel for the Commissioner stated: ‘Our other way of putting it is that, as a matter of substance, merely appending a computer or other technical steps to something that is, in truth, a plan, a scheme or a business method, doesn’t convert what is not a manner of manufacture into one’.
In contrast, in RPL Central, Middleton J, finding that computer-effected steps that give rise to a change in state or information in a part of a machine are patentable, stated:
It was suggested in the Commissioner’s submissions that the invention that is the subject of the Patent could be performed without the use of a computer, and that if one were to strip away the computer aspects of the claims, one would be left with only “a method for performing an aspect of a business”. Even if this were true I do not accept that this is the appropriate way to approach the question of manner of manufacture.
At least in this respect the Australian Patent Office seems to be adopting the approach of Justice Emmett. Those currently prosecuting patents for computer-implemented inventions before the Australian Patent Office may therefore be wise to emphasise the parts of the specification and claims that demonstrate high importance and centrality of computer implementation to the invention.