Commissioner seeks leave to appeal Federal Court Manner of Manufacture decision

In late December 2018, ICT patent applicants and their attorneys received a “Christmas bonus” in the form of the Federal Court judgment in Rokt Pty Ltd v Commissioner of Patents [2018] FCA 1988 (Rokt). The Court held that a digital advertising system and method (previously rejected by the Commissioner of Patents) was indeed patentable subject matter.

Interestingly, in the Rokt judgment, weight was placed on expert evidence in the test for patentable subject matter – which is a practice we are seeing more and more of at the patent prosecution level. Such evidence typically discusses the state of the art at the priority date together with detail on the technical problem solved by the invention in order to overcome an objection that a computer implemented invention is not a manner of manufacture. This evidentiary approach is largely as a result of IP Australia conflating the Manner of Manufacture (i.e. patentability) test for computer implemented inventions with novelty and inventive step.

On 16 January 2019, the Commissioner of Patents sought leave to appeal the Rokt decision to the Full Federal Court of Australia. We will keep you informed as to whether the leave to appeal is granted.

Ultimately, however, the vexed question of the Manner of Manufacture test as it applies to computer implemented inventions may be determined in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (Encompass), which is an appeal on which five judges will appear – as we reported here. We hope to have a judgment in Encompass by mid-2019.

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.