IBM Corp v Commissioner of Patents (1991) 33 FCR 218

Posted by Anton Hughes on Monday, July 04, 2005 with No comments
Re Invention: "a method for producing a visual representation of a curve image from a set of control points
Per Burchett J:
At 220: It was objected that this claim did not define a "manner of manufacture". Rather, claim 1 was said to recite a mathematical algorithm, which it then wholly pre-empted. An algorithm, named for the Arab mathematician whose work on algebra popularised Arabic numerals in Europe, may be relevantly defined as a procedure for solving a given type of mathematical problem.
At 221: In the present case, the delegate referred to later refinements of the Freeman (supra) test.
At 223: Before considering further the precise point, grounded in the United States cases, in reliance on which the delegate refused the application, it is desirable to re-examine the broad principle which is in question. The leading authority is [NRDC], where the High Court considered the patentability of a new process for ridding crop areas of certain kinds of weeds... They pointed out (at 262) that if a new use of a known substance "consists in taking advantage of hitherto unknown or unsuspected property of the material", the situation is that "there may be invention in the suggestion that the substance may be used to serve the new purpose; and then, provided that a practical method of so using it is disclosed and that the process comes within the concept of patent law ultimately traceable to the use in the Statute of Monopolies of the words 'manner of manufacture', all the elements of a patentable invention are present."
At 224: They said "The truth is that the distinction between discovery and invention is not precise enough to be other than misleading in this area of discussion." These observations seem to be to be as applicable to the laws of mathematics as they are to those of biochemistry.
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The court's conclusion (at 275) was that "a process, to fall within the limits of patentability ... must be one that offers some advantage which is material, in the sense that it belongs to a useful art as distinct from a fine art ... that its value to the country is in the field of economic endeavour."
At 225: In the present case, it seems to me that the use of the algorithm is not different conceptually from the use of the compounds involved in National Research and Development Corp. Just as those compounds were previously known, so here, it is not suggested there is anything new about the mathematics of the invention. What is new is the application of the selected mathematical methods to computers, and, in particular, to the production of [226] the desired curve by computer. This is said to involve steps which are foreign to the normal use of computers and, for that reason, to be inventive. The production of an improved curve image is a commercially useful effect in computer graphics.
Nor, in my opinion, do the United States authorities preclude this view. The Supreme Court of the United States returned to the subject in [Diamond v Diehr] ... Rehnquist J (at 8) said: "It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection". He held (at 9) the mathematical equation was not "patentable in isolation, but when a process for curing rubber is decised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold ... "
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Similarly here, the formula is applied to achieve an end, the production of the improved curve image. A method of producing that by computer, which is novel and inventive, is entitled to the protection of the patent laws.