Australian High Court refuses to hear Rokt software patent appeal

The High Court of Australia has dismissed an application for special leave to appeal from the Commissioner of Patents v Rokt Pte Ltd 1 of the Full Court of the Federal Court of Australia. As we have previously indicated, the law relating to the patentability of computer-implemented inventions is beginning to look settled in Australia by the decisions in Encompass CorporationRPL Central and Research Affiliates.

Computer implemented inventions as claimed need to lie in substance in the implementation of computer technology and not in the business-related idea to be patentable. When drafting the description and claims of the patent specification about how the invention is implemented by the computer technology, providing detailed information is critical to support an argument for patentable subject matter. The High Court said:

“This application for special leave to appeal from a judgment of the Full Court of the Federal Court of Australia (Rares, Nicholas and Burley JJ) involves the application of established principles and raises no question of general principle sufficient to warrant the grant of special leave to appeal. The application should be dismissed.”

If you have any questions about the patentability of computer-implemented inventions in Australia, please contact Mark Williams.

Thank you to UNSW’s Professor Michael Handler for the lead in this latest development.

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1   Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86

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.