In the most recent Australian Court decision regarding a computer-implemented invention (Encompass v Infotrack), an enlarged bench of five judges handed down a unanimous judgment, finding that the claimed invention, directed to the field of information retrieval and data management, was not patent eligible subject matter.
The Court noted that when determining whether a claimed invention is a manner of manufacture, and thus patent eligible subject matter, a question of characterisation is involved. Characterisation of the invention is determined by whether the invention is proper subject matter for the grant of a patent and is to be addressed as a matter of substance, not merely as a matter of claim form.
In rejecting the claimed invention, the Court applied well-established principles and held that “the method claims in suit are, in truth, no more than an instruction to apply an abstract idea (the steps of the method) using generic computer technology”. This finding is consistent with earlier decisions, which have found that generic computer implementation of otherwise unpatentable abstract ideas is insufficient to confer patentability on such ideas.
In its judgment, the Court stated “This appeal does not provide the occasion for this Court to set out the metes and bounds of patentable computer-implemented inventions, assuming that be an appropriate task”, thus foregoing the opportunity to provide further guidance and clarity for assessing the eligibility of computer-implemented invention for patents in Australia.
Notably, however, there was no consideration by the Full Court of any contribution of the invention relative to any prior art base - a practice presently adopted by the Australian Patent Office.
On the plus side, it remains the case in Australia that there are no exclusions to granting patents on computer-implemented inventions. However, merely automating an unpatentable abstract idea, using unspecified, generic computing technology without any other technical features or contribution to the invention, will not satisfy the threshold.
We will continue to keep our clients informed of any changes to Patent Office examination practice that might arise from this case. If you have any questions regarding the patentability of software and computer-implemented inventions in Australia, please contact us.