Nasdaq Technology AB

Nasdaq Technology AB sought to have a patent granted for a method of operating a financial clearing house using blockchain technology. The application was refused by the examiner on the grounds that the invention was a mere scheme and not a manner of manufacture as required by statute. Nasdaq appealed to the Federal Court of Australia, which upheld the examiner's decision. The central issue was whether the claimed invention constituted a technical process as required by the Patents Act 1990 (Cth). The court found that the invention did not involve any technical step or ingenuity that provided a solution to a technical problem. The claimed method merely implemented a process that recorded certain transactions and data involving a particular "smart contract" within a blockchain system. The court found that the claimed invention lacked any technical contribution to the art or improved functioning of a computer system.

The court distinguished the present case from previous decisions where the invention had involved a technical step to overcome a technical problem with blockchain technology. In the present case, the court found that there was no such technical step or problem that had been addressed. The invention was merely the implementation of particular technical steps to overcome a problem that was not found to be technical. The court concluded that the invention was a mere scheme and not a manner of manufacture as required by section 45 of the Patents Act 1990 (Cth). The application was therefore refused. The court found that the invention did not constitute a technical process as required by the Act and did not provide any technical contribution to the art or improved functioning of a computer system.