Computer-implemented business methods and manner of manufacture…where do we stand?

By Lucy Sanderson
Intellectual Property Patents & Trade Marks

In brief 5 min read

In Technological Resources Pty Ltd v Tettman [2019] FCA 1889, the Federal Court decisively reversed yet another Australian Patent Office (the APO) decision to reject a patent application on the basis that it was not a 'manner of manufacture'. The APO had held that a method for separating ore was a mere scheme and, thus, not patentable subject matter. The judgment also provides more general insight into the patentability of computer-implemented business methods.

Key takeaways

  • Principles relating to computer-implemented inventions do not apply to cases where a physical result is produced from the taking of physical steps, such as in mineral separation.
  • This decision does not change the position that use of 'generic computer technology' is insufficient to transform an abstract idea into a patentable invention.
  • However, computer-implemented business methods/schemes remain patentable if the invention lies in the computerisation: ie an improvement in computer technology.
  • The APO has been applying an erroneous approach to 'manner of manufacture'.

Who in your organisation needs to know about this?

This decision is relevant to those working to commercialise research and development, including patent attorneys and legal counsel.

The decision

The claimed invention concerns a system for upgrading ore, whereby large volumes of mined material are successively identified and separated according to grade.

Tettman (the respondent and opponent) mounted three main arguments to assert the claimed invention was not a 'manner of manufacture' and so was not patentable.

Mere schemes

First, relying upon the delegate's reasoning, Tettman asserted the claims were a mere scheme.

Schemes whereby information is merely gathered, processed or presented as 'abstract ideas' are generally unpatentable.

The delegate characterised the claimed invention as a mere scheme by analogy to decisions concerning computer programs. According to the delegate, the claimed invention was defined without reference to technical components; utilised generic technology; and addressed a logistical problem, not a technical one.

The Federal Court decisively rejected this characterisation and refused to analogise the claimed invention with computer-implemented methods. Mineral separation involves a physical process: utilising physical apparatus to produce a physical, tangible result.

Mere working directions

The delegate had asserted the claims related to an 'old result' (sorting mined material) and were mere working directions. Working directions (directions for the operation of known articles, machines or processes to produce an old result) are unpatentable, regardless of whether they improve efficiency.

The court accepted the evidence of TRPL (the patent applicant) that the claimed invention involved a combination of features that was not part of common general knowledge before the priority date. Accordingly, the result produced was not an old result.

Mere collocation – use of known materials for independent known purposes

Tettman argued the patent application claimed the use of known materials for independent known purposes, which the High Court in Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 held to be non-patentable subject matter. The court rejected this argument, confirming the approach in Microcell rarely applies, and holding that the claims formed a functionally integrated series of steps, each dependent on the preceding one. New combinations of known integers can be a 'manner of manufacture'.

Computer-implemented business methods

The decision provides a useful review of the patentability of computer-implemented business methods/schemes.

The fact that a claimed invention is a 'scheme' or 'business method' does not preclude it from being patentable. However, as recently affirmed in Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956, 'generic computer technology' does not transform an abstract idea into a patentable invention.

The following claimed inventions have failed on this basis:

  • a computer-implemented method of assembling a portfolio of assets: Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150;
  • a computer-implemented method of gathering evidence relevant to an assessment of an individual's competency: Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177;
  • a computer-implemented method of providing information for risk management to portable personal computing devices in the field: Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956; and
  • a computer-implemented method of displaying information relating to one or more entities: Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161.

Generally, for computer-implemented business methods/schemes to be patentable, ingenuity must lie in the computerisation such that the computer is integral to the invention, not a generic tool through which an abstract idea is implemented. Based on Technological Resources, a scheme will also be patentable if it generates a tangible physical result.

Actions you can take now

  • A more robust approach to challenging the APO on patentable subject matter ('manner of manufacture') objections may be warranted.
  • In the coming year, watch out for the Full Court's decision in Rokt, which should provide further guidance on manner of manufacture in relation to computer-implemented inventions.