Archive for the ‘Australian patent law’ Category

More Trouble for Business Method Patents in Australia

Sunday, March 13th, 2011

A report from Bill Bennett of the Pizzeys law firm in Australia  regarding the recent decision in Research Affiliates, LLC. [2010] APO 31:

Last month we drew your attention to a decision of the APO (Iowa Lottery) in which the APO rejected an application directed to a business method (pooling of jackpots) implemented in a computer environment.  In our commentary, we noted that we could not reconcile the APO’s approach with the governing precedential law and we made some practical suggestions as to how an application might be crafted in order to maximise its prospects of success.  Our commentary can be found here:

 http://australianpatentlaw.wordpress.com/2010/11/12/apo-casts-doubts-on-business-methods/

 The APO has now issued a further decision (Research Affiliates) in which an application directed to a business method (portfolio management) implemented in a computer environment has been rejected.  The decision can be found here:

 http://www.austlii.edu.au/au/cases/cth/APO/2010/31.html

 It is clear from the sequence of decisions, and from informal discussions with senior members of the APO, that a decision has been taken within the APO to reject business method applications until such time that a rejected case is taken on appeal and the law is “clarified”.

 In the meantime, our practical advice is now moving towards “delay and defer” prosecution whilst a suitable case is taken forward on appeal.

 Regards, Bill

PIZZEYS

bbennett@pizzeys.com.au

Update on Business Method Patents in Australia

Friday, July 23rd, 2010

My thanks to Bill Bennett from Prizzeys law firm in Australia for this update on business method patents in Australia.  As explaind in more detail below by Mr. Bennett, the subject case has qualified the “physical effect” requirement in Australia (which is akin to the “machine or transformation” requirement in the US) by now making it clear that the physical effect must be “central to the purpose or operation of the claimed process or otherwise arises…in a substantial way”.  In Australia, the physical effect rule requires that a method must produce “a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation”.  The Grant decision (Grant v Commissioner of Patents [2006] FCAFC 120) in which this proposition is set forth, also said that a change in the state or memory of a computer may be a “physical effect”.   This post is worth reading to see how Australia is grapping with the issue of what to do with “abstract” business inventions that are implemented in ”physical” computing systems, an issue that was not addressed by Bilski due to the fact that none of the claims at issue were computer implemented. 

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