Australian software patent ruling will not affect examinations
Australia’s IP office has confirmed that a recent decision in a high-profile patent case does not affect examination procedure for software patents.
Last Friday, September 20 WIPR reported that lawyers had expressed disappointment that the Federal Court of Australia’s ruling in Encompass v InfoTrack did not provide a definitive test on patentability of computer-implemented inventions.
In its decision, the court ruled that the functions claimed by Encompass’s patents could be performed by a “generic computer implementation”, and were therefore not patentable.
Encompass had accused Infotrack of infringing two of its innovation patents, both entitled “Information displaying method and apparatus”.
In a statement, two lawyers at Australian law firm Allens said that “we had hoped the decision would provide greater clarity in respect of a test to determine what is required for a computer-implemented invention to be patentable in Australia”.
The decision as issued was “unlikely to radically alter the state of play,” said Pasquale Aliberti, senior associate, and Ian Lindsay, principle patent attorney.
In a statement issued last week, IP Australia said that its commissioner had weighed up the findings in the highly-anticipated case and found that it “does not alter current examination practice in relation to computer implemented inventions”.
IP Australia has previously published a manual outlining the rules governing patentability of different inventions in the country.
“Given the considerable interest in this matter, the commissioner will take this opportunity to review the manual to ensure that our practice and procedures are reflected clearly and consistently in the relevant sections,” the office said.
IP Australia pledged to consult with “key stakeholders” regarding any revisions to the rules.
The patents asserted in Encompass v InfoTrack are innovation patents, which are set to be phased out.
These patents only require the applicant to demonstrate an “innovative step”, which is a lower threshold than the “inventive step” required for standard patents.
This month, Australian legislators cleared the way for a bill which would phase out the innovation patent, a move which has sparked debate in the country.
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