The Full Federal Court today released its eagerly awaited decision in ENCOMPASS CORPORATION PTY LTD v INFOTRACK PTY LTD. The Encompass system broadly allows a user to obtain data about an entity from a number of disparate sources and can be described as a software related application.

However, the real interest in the case is not the technology underpinning the system, but rather how the Court looks at whether the subject matter of the invention per se is patentable – known in Australia as being a ‘Manner of Manufacture’.

How patentability is assessed has in recent times been a point of contention for those seeking to protect their inventions. This has been particularly the case for those with software related inventions, which have been very difficult to protect. Other recent Appeal decisions (Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177) did not provide sufficient guidance on how to interpret the law to software inventions –  with both the Patent Office and Patent Attorneys still largely disagreeing as to how patentability should be considered in light of those decisions.

Perhaps being aware of the issue, the Federal Court assigned five judges to hear the Encompass appeal, including Chief Justice Allsop.  Usually a full federal court appeal is only presided over by three judges.  The move meant that the Court was not bound by the previous decisions in Research Affiliates and RPL.

Unfortunately for Encompass the Court has dismissed the appeal and found the patent is invalid.  We haven’t yet seen the reasons for the decision so at this stage it is unclear what the Court has said about patentability.

More details to follow. 

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