The case of Discovery Life Limited [2017] APO 36 was decided on 18 July 2017 by the Australian Patent Office and decided that computer-implemented claim 1 of Australian standard patent application 2016203283 was not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies i.e. the claimed invention did not constitute patentable subject matter. Please click this link to see claim 1 of the patent application.

The invention provides ‘a method of rewarding clients for managing their health, the idea being that a person who looks after their health should pay less for their life assurance than a person who leads an unhealthy lifestyle’. In one example, the invention provides a ‘long term benefit to clients who continue to look after their health by paying out a cash amount to them every five years’.

This case continues to exemplify that patent-eligibility of computer-implemented subject matter is still a contentious area because the substance and contribution of the claimed invention must be ascertained for each case, and the range of factors to be considered (or disregarded) is still evolving.

At paragraph 26 of the Decision, the Delegate found that “the substance of the present invention lies in the method of linking of the life insurance policy of the insured life with a related medical insurance policy with the aim of rewarding policyholders who take steps to manage their health with a monetary benefit at the end of a certain period” referring to paragraphs 18, 27 and 28 of the description.

At paragraph 27, the Delegate found that the use of a computer system to carry out the claimed method “appears to be no more than a generic computer with a CPU and a memory that is programmed with a set of instructions for causing the computer to perform the disclosed methodology ... What the claimed invention does is to no more than “‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well- known and understood functions” (RPL at [96]). It is plainly a business innovation, a mere scheme”.

Therefore the Delegate found that the claimed invention is not a manner of manufacture and thus not directed to patentable subject matter. It is important to note that even if the patent specification is drafted to a method of using a computer system to carry out the steps of linking the life insurance policy with the related medical insurance policy and providing a monetary payback at predetermined intervals, the invention must be in the computerisation of the method.