Software Patentability: Australian Full Court issues long awaited decision and provides glimmer of hope for computer implemented inventions
16 September 2019
On Friday the Full Bench of the Federal Court issued its long-awaited decision in the appeal in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd  FCAFC 161 which was expected to provide clarification in respect of the patentability of computer-implemented inventions. The claims had been found not to be patentable by the judge at first instance and the primary ground on appeal was whether Encompass’ claims were for a “manner of manufacture”— the Australian term for “patentable subject matter” (cf. 35 USC 101 and EPC Art. 52(2)). The claims on appeal related to a computer-implemented technique which was alleged to make it easier to find information about entities and collate it in a usable form.
The appeal was unsuccessful—the judges found that the claims are not for a manner of manufacture. However, it would seem that the decision gives hope to patent applicants in respect of computer implemented inventions. The judges’ reasons go to great pains to indicate that their decision relates specifically to a situation where a claimed invention concerns a method (or related apparatus) which is inherently unpatentable operated on an otherwise generic computer. In reaching this conclusion the judges noted that they were considering a case where “the method itself is claimed in terms which amount to no more than an abstract idea or scheme”.
On this basis, we anticipate better prospects for computer-implemented inventions where it is possible to claim the invention in more concrete terms.
Indeed, on the face of it, the decision does not appear to be inconsistent with the reasons in the recent decision of Rokt Pte Ltd v Commissioner of Patents  FCA 1988 which is under appeal, where claims to a computer-implemented invention were found to be for a manner of manufacture. In that case, the claims defined the invention at a level that embodied novel functionality.
Overall while not providing a green light for all inventions implemented by a computer, it would appear that the decision in Encompass is positive for patent applicants. It clarifies that computer implemented inventions are patentable unless the claimed invention is no more than an otherwise non-patentable scheme or business method implemented on a generic computer.
Griffith Hack has successfully worked with a number of clients to protect computer implemented inventions. If you would like to discuss this topic in more detail, please contact one of our experts.