Au - Business Methods Expansion of the Internet and e-commerce led to many patents being applied for and granted for “business methods”. Business Method Patents – disclose and claim new methods of doing business. Includes new types of e-commerce, insurance, banking, tax compliance.

Au -Business Methods Recent Debate Where the boundary between patentable and non-patentable business methods should lie. Are pure business methods patentable?

Patentable Subject Matter in Australia Claimed invention has to be a “Manner of manufacture” To be a manner of manufacture has to result in: An “artificially created state of affairs” in a “field of economic endeavor” Must belong to a useful art as distinct from a fine art A physical effect or phenomenon National Research Development Corp v Commissioner of Patents, (1959)

Au – Business Methods In recent decision Grant v Commissioner of Patents, a “pure” business method for protecting an asset from legal liability found not to be patentable on the basis that it did not produce the required physical effect. The case further defined the term “physical effect”.   In Grant, the Court stated that a method must produce “a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation”.  Grant went on to say that a change in the state or memory of a computer may be a “physical effect”. 4

Au – Business Methods Recent Australian Patent Office Decision, Invention Pathways Pty Ltd, directed towards a computer implemented method.   Australian Patent Office rejected the method as not for a "manner of manufacture" even though the method claim involved a computer. The Decision tried to further define the “physical effect” requirement by stating that the “physical effect” must be “central to the purpose or operation of the claimed process or otherwise arises…in a substantial way”.

Au – Business Methods Australian Patent Office have been making objections by quoting the Invention Pathways Pty Ltd decision stating that an invention does not form patentable subject matter if the use of a computer is not “central to the purpose or operation of the claimed process”. Overcoming such objections by quoting the Grant decision and stating that the claimed process produces the required physical effect in producing a change in the state or memory of the computer upon which the process is implemented.

Au - Business Methods If the business method is implemented using a computer, it will most likely be patentable. Pure or abstract methods of doing business are considered not patentable. 7