More Trouble for Business Method Patents

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:

https://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