Method of innovation confirmed not a patentable invention

The Full Federal Court has dismissed the patent applicant’s appeal in Watson v The Commissioner of Patents[1].  We wrote about the judgment which was the subject of this appeal here.

The decision upheld a finding that a method by which an organisation engages with an innovation service provider to innovate is not a patentable invention under the Patents Act s 18(1A) (i.e. not a manner of manufacture within meaning of the Statute of Monopolies).

The Full Court confirmed the current approach to Manner of Manufacture, requiring that the substance of the invention must be characterised as per the high Court in Myriad[2], and that a mere abstract idea or scheme is not within the “established ambit” of the Statute of Monopolies as per the Full Court in Grant[3]

Also noted were a number of recent decisions that considered patentability of computer implemented inventions in particular, Research Affiliates[4], RPL Central[5] and Encompass[6], which focussed on the computer’s role in the invention to ascertain whether the claimed invention involved “something more” than an abstract idea or scheme.

The Full Court drew an analogy between the applicant’s invention and the invention in Grant (which was an asset protection method found to produce no artificial effect) noting:

“Indeed, the substance of the scheme in Grant is analogous to Mr Watson’s claimed invention. Problems solved by the claim, as claimed by Mr Watson, are in fact business or financial issues potentially faced by an organisation, not technical problems solved by the claimed method. At most, the claimed invention is a business innovation, not a technological or technical innovation.”

The application for leave to appeal the decision of the primary judge was refused.

Fresh Evidence

Interestingly, the patent applicant also sought to adduce fresh evidence in the form of hundreds of pages of patent documentation. This was intended to respond to the primary Judge’s observation that the field of activity of the applicant’s invention had never been the subject of a patent. The applicant claimed the new evidence demonstrated that there were many such patents in the field.

In rejecting the application to adduce new evidence, the Full Court noted that it would be unworkable to examine numerous patents and patent specifications to determine  whether they disprove observations made by the primary Judge as well as whether or not each of those patents was valid.

The Full Court also noted that the patent documentation would “be of no assistance in determining the validity of this Patent as the mere fact that various patents have been applied for or granted by no means proves that they are valid. As such, the exercise in examining such patents would have been quite pointless.”

If you have any questions about patentability of subject matter please contact Mark Williams.

[1] Watson v The Commissioner of Patents [2020] FCAFC 56 (31 March 2020)

[2] D’Arcy v Myriad Genetics Inc [2015] HCA 35 (7 October 2015)

[3] Grant v Commissioner of Patents [2006] FCAFC 120 (18 July 2006)

[4] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (10 November 2014)

[5] Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (11 December 2015)

[6] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (13 September 2019)


Mark’s academic background is in computer science and electrical engineering. He assists clients in obtaining and enforcing their intellectual property rights in the areas of software, electronics and engineering. Prior to joining Phillips Ormonde Fitzpatrick, Mark worked for a leading automotive manufacturer.