A possible ceasefire in IP Australia’s war on the patentability of computer implemented inventions?

Almost three years ago, the Full Federal Court of Australia handed down judgment in a very notable case¹. At the time, it was hoped that this judgment might provide patent applicants with certainty around the application of the law of Manner of Manufacture (i.e. patentable subject matter) as it relates to computer implemented inventions in Australia.

In the time since, uncertainty has increased, with the Australian Patent Office attempting to interpret RPL Central to provide a one size fits all approach to the issue for its Examiners – resulting in a slew of abandonments, divisional applications and Patent Office hearings.

IP Australia’s changes

The RPL Central judgment made obiter mention of the approach taken in other jurisdictions, noting that in the United Kingdom a 4-step test, known as the ‘Aerotel’ test, was used. In mid-2017, the Australian Patent Office updated their manual of practice and procedure to indicate that the ‘Aerotel’ approach was appropriate in determining eligibility of computer implemented inventions under Australian law.

As a result of this change of practice, a number of Australian Patent Office decisions were issued citing the ‘Aerotel’ test to reject computer implemented inventions.

Deviating from RPL Central

In the last 12 months or so, the Australian Patent Office has further deviated from RPL Central in that it now is considering prior art when making a determination of whether the subject matter of an application is patentable or not. Applicants for computer implemented inventions are now seeing examination reports issue where “the features mentioned [in the claim] are considered commonplace requirements”, “the claimed invention is nothing more than well-known computing features at the time of the priority date”, or even situations where examination is not carried out and the opinion on Patentable Subject Matter is reserved until the actual contribution over the prior art in the claim is determined.

As a result of the above changes in practice, there have been over 40 Australian Patent Office decisions in relation to Manner of Manufacture – exclusively related to computer implemented inventions in the last 24 months. This is not to mention the number of cases which have been abandoned (where the applicant did not want to go through with the expense of a hearing) and/or cases that are the subject of one or more divisional applications which were filed to keep the application alive and argue the patentability point further.

The case of Encompass Corporation Pty Ltd v InfoTrack Pty Ltd

Further, five cases are presently before the Courts and are ultimately appeals from Australian Patent Office decisions on the subject of Manner of Manufacture relating to computer implemented inventions. Of particular note is Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (Encompass), which is an appeal from a Federal court infringement matter where at first instance, two innovation patents were found novel and to involve an innovative step, but lacking manner of manufacture. The Encompass judgement at first instance, to some extent, relied on the prior art to come to a view of patentability of the subject matter.

What is interesting about Encompass is that five judges will appear in the appeal, when typically there are only three judges. The significance of this is that the judgment in Encompass could usurp the judgment in RPL Central, because while a while a Full Federal Court judgment, RPL Central only consisted of three judges.

In a further development, and perhaps a first under Australian Patent Law, both IP Australia and the Institute of Patent and Trademark Attorneys (the peak body representing patent attorneys) have sought leave to intervene in the proceedings – likely around the approach to the Manner of Manufacture test.

A change in law?

In light of the above, the outcome of this case may result in a change in the application of the law as it relates to Manner of Manufacture, and therefore the practice at the Australian Patent Office, or uphold the judgment in RPL Central. One option available is for applicants to consider delaying examination of computer implemented inventions where possible until the issue is settled. However, an appropriate strategy to address Manner of Manufacture objections needs to be established on a case-by-case basis. We hope to have a judgment by mid-2019.

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  1. Commissioner of Patents v RPL Central Pty Ltd (2015) FCAFC 177 (RPL Central)

BCSE(Hons) MIP FIPTA

Mark’s academic background is in computer science and electrical engineering. He assists clients in obtaining and enforcing their intellectual property rights in the areas of software, electronics and engineering. Prior to joining Phillips Ormonde Fitzpatrick, Mark worked with a major Australian car manufacturer within their Current and Past Model Engineering group.