2019 – An important year for software patents

Big decisions expected on computer-implemented inventions

2019 promises to be a year of great importance for computer-implemented inventions in Australia. An enlarged bench of the Full Court sat in November 2018 to hear the appeal from a decision of a single judge in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421. That decision is expected towards the middle of the year.

Interestingly, the Commissioner of Patents exercised Her right to be joined as a party in the Encompass case, providing submissions on the assessment of patent eligible subject matter. Once the Commissioner intervened, the Institute of Patent and Trade Mark Attorneys of Australia (IPTA) sought leave to join and also provided submissions.

There is great expectation that the Full Court will provide clarification and guidance on the correct approach for assessing patent eligible subject matter. All technologies should be assessed in the same way and it is hoped that the Full Court confirms that the question of patent eligible subject matter is independent of the considerations of novelty and inventive step.

The decision of Justice Robertson in Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 has been appealed by the Commissioner of Patents. It is expected that the appeal will not be heard until after the Encompass decision issues.

There are also other appeals to be heard by the Federal Court in respect of decisions by the Patent Office to refuse applications for patents on computer-implemented inventions, including:

as well as further decisions to issue from hearings before the Patent Office.

This is a year of great expectation, with everyone hoping for clear guidance for assessing the eligibility of computer-implemented inventions for patent protection in Australia.

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