Australia weighs in on software patents

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Australia weighs in on software patents

Australia’s Full Federal Court rules that the computer implementation of an otherwise unpatentable business scheme does not make the claimed invention patentable

The Court’s decision in Research Affiliates v Commissioner of Patents, released today, stems from IP Australia’s rejection of patent applications 2005213293 (the parent application) and 2010236045 (the divisional application). Research Affiliates appealed those decisions to the Federal Court, which upheld the patent office’s ruling, and today’s decision arose from the appeal from that holding.

The claimed invention, for a method of managing investment portfolios and creating securities indexes, is described in the decision as:

[The claimed invention] provides a method of constructing data indicative of a non-capitalisation weighted portfolio of assets, the method being implemented in a computer system and comprising a series of steps commencing with the receipt in the computer system of data gathered in regard to a plurality of assets. Other aspects of the invention provide a system for constructing a non-capitalisation weighted portfolio of assets and a computer-implemented non-capitalisation weighted portfolio of assets construction system. In each case, a computer is used to receive the data and to provide “weighting means” for weighting each of the plurality of assets.

In rejecting Research Affiliates’ appeal, the Full Federal Court ruled that the claimed method is an abstract idea and that any inventive step that may be claimed is found in the creation of the index as information or as a business scheme and not in the computer implementation. The court also found that the claimed invention does not involve what would constitute an improvement in computer technology.

Interestingly, the court also examined cases from other jurisdictions, including the US Supreme Court’s ruling in Alice v CLS and Aerotel v Telco in the UK, and concluded that the claimed invention would not be patentable in those jurisdictions either.

AJL Bannon SC, Mr PW Flynn and Shelston IP Lawyers acted for Research Affiliates, while DK Catterns QC, C Dimitriadis, AR Hughes and the Australian Government Solicitor represented IP Australia.

Check back later this week for more analysis on this case.

more from across site and SHARED ros bottom lb

More from across our site

Paul Hastings and Smart & Biggar also won multiple awards, while Baker McKenzie picked up a significant prize
Burford Capital study finds that in-house lawyers have become more likely to monetise patents, but that their IP portfolios are still underutilised
Robert Reading and Faidon Zisis at Clarivate unpick some of the data surrounding music-related trademarks
China's latest IP litigation statistics and a high-profile hire by O'Melveny were also among the top talking points this week
David Aylen, who spent more than 20 years at Gowling WLG, has joined United Trademark and Patent Services as of counsel in the UAE
Europe is among the most lucrative legal markets for PE firms to bet on, but clients’ reactions will decide whether external investment drives success
Rulings of note covered pre-June 2023 infringements and jurisdiction over non-UPC states, while winners of Managing IP’s EMEA Awards acted in multiple cases
Jason Blair, a former special marks examiner, said Dykema’s Texas presence will help him build deeper connections with clients
Lee Curtis and Rachel Platts at HGF discuss the rise of the ‘intention economy’ and its impact on trademark law
Martin Wintermeier discusses taking a hit for clients, not letting stress get to you, and why being a criminal defence lawyer might have been fun
Gift this article