In brief 3 min read
In a highly anticipated decision, the Full Bench of the Australian Federal Court recently dismissed the appeal in Encompass Corporation v InfoTrack. Despite the opportunity to clarify the scope of patentability of computer-implemented inventions, the question of what encompasses patentable subject matter remains open.
Background - innovation patents ROKT by recent decisions
Late last year, we reported on a significant win by Australian start-up ROKT, in which the Federal Court of Australia upheld the validity of its patent for a smart advertising software platform. However, we were cautious in drawing any general conclusions about the patentability of computer-implemented inventions in Australia, given the pending appeal proceeding in Encompass Corporation v InfoTrack.
Encompass’ innovation patents are directed to a software platform that allows for generating and displaying a network representation to a user by querying remote data sources. Users can select a node on the network and perform multiple searches to retrieve information related to the selected node. The patents were found to be invalid by the primary judge on the basis that they lack patentable subject matter.
Five Judges, one decision
Despite a lively discussion of the technical features and advantages provided by Encompass' platform at the appeal hearing, an extended five judge bench of the Full Federal Court issued a unanimous decision confirming 'computer-implementation' is insufficient to provide patentability to an ‘otherwise unpatentable scheme’ (for a more detailed overview, see our previous article). One of the criteria used by the Full Court to assess the patentability of Encompass’ invention was whether it could be performed, in substance, by using generic computer implementation. In this case, the Full Court found that the claimed invention could not be considered patentable because it could be performed by generic computer implementation.
The broad scope of the terminology used in the specification, also replicated in the claims, may have worked against Encompass by masking the actual technical features developed by their engineers to design the platform.
Interestingly, the decision refers to passages of the patent specification stating that specific functions of the software platform could be realised in a number of ways depending on the preferred implementation. The broad scope of the terminology used in the specification, also replicated in the claims, may have worked against Encompass by masking the actual technical features developed by their engineers to design the platform. However, it is important to highlight that the rapidly evolving nature of computer technologies often necessitates the use of broad terminology in patent claims to avoid restricting inventions to specific software/architecture implementations, which can allow for easy workarounds.
While not providing a definitive test, the appeal decision nonetheless offers greater clarity on the patentability criteria of computer-implemented inventions. However, the Full Court appears to have missed the opportunity to provide more comprehensive guidance for assessing computer-implemented inventions and to comment on the peculiar approach taken by the Australian Patent Office during examination, based on UK case Aerotel Ltd v Telco Holdings Ltd; Re Macrossan’s Application [2007] 1 All ER 225.
What's next?
This decision is unlikely to radically alter the current state of play, but does clarify that Encompass' 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.
Importantly, the Full Court avoided commenting on the lower court decision in Rokt (currently on appeal), leaving hope for further clarification of the scope of patentability of computer-implemented inventions when the Full Court hands down the appeal decision. We will be watching this space closely and will keep you up to date with further developments.