Federal Court Fails to Clarify Test for Patentability of Software Inventions in Australia

As we reported in our update last Friday, 13 September 2019, an enlarged Full Bench (five judges) of the Federal Court of Australia handed down its much-anticipated judgement in the appeal case Encompass Corporation Pty Ltd v. InfoTrack Pty Ltd [2019] FCAFC 161, in which it upheld the finding of the primary judge that the patents in suit do not relate to patent-eligible subject matter (i.e. not a “manner of manufacture”) under Australian law.

This judgement had been highly anticipated because many had hoped the enlarged Full Bench of the Federal Court would take the opportunity to clarify the issue of patent-eligibility of computer-implemented inventions (CIIs), especially in view of the practice of IP Australia in this area in recent years. Specifically, IP Australia (i.e. the Patent Office) has commenced a practice of assessing patent-eligible subject matter in the area of CIIs with reference to the prior art, contrary to the jurisprudence and contrary to the established approach generally. Indeed, this approach by IP Australia has given rise to numerous appeals from decisions of the Commissioner of Patents, which are heard by the Federal Court. Accordingly, when the Commissioner applied for, and was granted, leave to intervene in this appeal to present the position of IP Australia on the question of patent-eligible subject matter for CIIs, the Institute of Patent & Trade Mark Attorneys of Australia (IPTA) also applied for leave to intervene in the appeal proceedings to present an alternative position. In this regard, the Federal Court notes at paragraphs [72] and [73] of its decision:

IPTA’s submissions took issue with the Commissioner’s statement that, in considering the patentability of computer-implemented methods, a key consideration is determining where the alleged ingenuity lies.  IPTA submitted that this statement is “misconceived” because it intrudes questions of novelty and inventive step into the question whether the invention is a manner of manufacture; it suggests that the way in which the method is implemented in the computer is decisive and directs attention away from the method as claimed; and it suggests that a method characterised as a business method or a scheme is unpatentable, whereas it is only methods or schemes that are no more than a method of doing business or an abstract idea (with no practical application or effect) that are not patentable.

IPTA submitted that the Commissioner’s “misconceptions” had become established practice when examining patent applications.  IPTA said that this was of “central concern to IPTA and its members’ clients seeking patent protection for their inventions”.  IPTA said, further, that these “misconceptions” are reflected in the Australian Patent Office Manual of Practice and Procedure (the Manual) on which the Commissioner’s delegates rely for authoritative guidance in the examination of patent applications.  IPTA argued that this has “led … to a confused state of affairs in the examination of computer-implemented inventions, and will cause examination of many such applications to miscarry”.

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