Patentability of computer implemented inventions in Australia: three key takeaways from the Encompass decision

Although it is disappointing that the full bench of the Federal Court did not set straight “the metes and bounds of patentable computer-implemented inventions”,[1] the Encompass decision [2] has provided some useful guidance for patenting computer implemented inventions in Australia.

1. A physical effect does not mandate a finding of patentable subject matter.

With reference to Myriad,[3] the Full Court affirms that the terminology of an “artificially created state of affairs of economic significance” used in NRDC [4] is not a definition of, or an exhaustive formulation of the concept of, a manner of manufacture; and satisfaction of such a formulation is not necessarily enough to confer patentability to a claimed invention. [5]

2. Something more than “mere generic computer implementation” of an otherwise abstract idea is required.

The Full Court confirms that an uncharacterised method is not patentable subject matter simply because it is implemented by an electronic processing device. The invention needs to be characterised to a sufficient degree in the claims to distinguish it from generic computer implementation of an otherwise abstract idea. [6]

3. An improvement in the computer is not required.

An improvement in the computer can only be established by way of comparison with the prior art, which would necessarily intrude questions of novelty and invention step. The Full Court clearly endorses the view that manner of manufacture is a conceptually distinct element of patentability, referencing the caution set out in CCOM7 and reiterated in Research Affiliates [8].

As opposed to faulting the approach of the primary judge, the Full Court suggests that in inquiring whether the claimed method results in an improvement in the computer, the primary judge was not seeking to import any particular test into his consideration; he was instead searching for patentable subject matter by reference to a “touchstone of such subject matter”. [9]

Although the Australian Patent Office has asserted that the decision does not alter current examination practice, it has also advised that “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”.

We keenly await any proposed changes.

See here for further coverage of the Encompass decision

• 1 Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161, para 77
• 2 Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161
• 3 D’Arcy v Myriad Genetics Inc [2015] HCA 35;258 CLR 334
• 4 National Research Development Corporation v Commissioner of Patents [1959] HCA 67; 102 CLR 252
• 5 Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161, para 83 and para 103
• 6 Ibid, para 101 and para 110
• 7 CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260
• 8 Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177
• 9 Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161, para 109, para 110, and para 113