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20 September 2019PatentsSarah Morgan

Australian court rejects Encompass computer-implemented appeal

The Full Bench of the Australian Federal Court issued a decision on the criteria for patentability of computer-implemented inventions late last week, in a much-anticipated ruling.

However, the closely-watched decision, which was handed down on September 13, failed to provide a definitive test on patentability, much to the disappointment of lawyers.

Encompass, the owner of innovation patents which are both called “Information displaying method and apparatus”, accused technology company InfoTrack of infringement. InfoTrack admitted infringement, while counterclaiming for invalidity of the patents.

Innovation patents last up to eight years and are designed to protect inventions that don’t meet the inventive threshold required for standard patents.

In March 2019, Justice Perram found that the patents didn’t claim a patentable invention, because they didn’t involve a manner of manufacture (one of four main criteria required for an invention to be patentable).

Perram said: “In any event, it is difficult to see how a person could use the method and apparatus disclosed in the patents to do something with a computer which could not already be done. An improvement in the computer does not result. For that reason I do not think that the patents involve a manner of manufacture and they are accordingly invalid.”

According to law firm Allens, the judge’s decision “endorsed all previous authorities in this area without providing any additional guidance to ascertain what type of computer-implemented inventions would be patentable”.

Encompass appealed against the judge’s decision. This, said Allens, provided the Federal Court with an “opportunity to clear the uncertainty by providing a more defined test” for patentability of computer-implemented inventions.

But the Federal Court dismissed Encompass’ appeal last week, finding that the Encompass invention can be performed, in substance, using a generic computer implementation so can’t be considered patentable.

“This appeal does not provide the occasion for this court to set out the metes and bounds of patentable computer-implemented inventions, assuming that be an appropriate task,” said the Federal Court in its decision.

Allens said that this decision is unlikely to “radically alter the current state of play”, however, it does clarify that the invention was deemed to be an otherwise unpatentable method operated on a 'generic computer'.

“This distinguishes it from inventions that remain patentable where there is ingenuity in the use of a computer or an algorithm, implemented on a computer, which produces a tangible technical output,” added Allens.

The judges didn’t comment on the recent Federal Court decision in Rokt v Commissioner of Patents (which is currently on appeal). In that case, Justice Robertson found a patent for a smart advertising software platform to be patentable.

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