Wednesday, December 21, 2011

Research Affiliates knocked back again

Is time running out?In Research Affiliates, LLC [2011] APO 101 (5 December 2011) we see a divisional of Research Affiliates' patent application suffer the same fate as the parent.

The patent application

Australian patent application 2010236045 was filed initially by Robert D. Arnott and later assigned to Research Affiliates (the applicant).  It is a divisional application out of application 2005213293.  The parent application has already been refused in Research Affiliates, LLC. [2010] APO 31 (17 December 2010) (see my blog post).  It is under appeal to the Federal Court.

There were three examination reports issued before the matter was set down for a hearing on 5 December 2011.  I guess it's not really a hearing because the applicant had already advised that it did not wish to be heard.

Method claim 1, for example, reads as follows:

1. A computer-implemented method for generating an index, the method including steps of:
(a) accessing data relating to a plurality of assets;
(b) processing the data thereby to indicate a selection of the assets for inclusion in the index based on an objective measure of scale other than share price, market capitalization and any combination thereof;
(c) accessing a weighting function configured to weight the selected assets;
(d) applying the weighting function, thereby to assign to each of the selected assets a respective weighting, wherein the weighting:
(i) is based on an objective measure of scale other than share price, market capitalization and any combination thereof; and
(ii) is not based on market capitalization weighting, equal weighting, share price weighting and any combination thereof,
thereby to generate the index.

Manner of manufacture

The Delegate concluded at [13] that:
"there is nothing in the claims of the present divisional application that would suggest a different conclusion be reached than was reached for the parent application. The claims of the present application contravene subsection 18(1)(a) for the same reasons as outlined in the parent case."
In fact, the Delegate commented that the current claims are an "even greater contravention" of the manner of manufacture requirement than the parent claims.

Further steps

Presumably this patent application will join the parent application already before the Federal Court.

[UPDATE: Read Research Affiliates and the unpatentable index for a discussion of the Federal Court decision handed down 13 February 2013.]
Photo courtesy of author thinkpanama under Creative Commons licence.

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