IP Australia weighs in on Encompass v Infotrack and patentability of software

As we recently reported, the judgment in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (Encompass) endorsed the earlier Research Affiliates and RPL Central decisions, and the law as it relates to patentable subject matter in Australia (manner of manufacture) in the context of computer implemented inventions (software patents).  

IP Australia has now advised that the judgment in Encompass does not alter current examination practice in relation to software patents. That practice is set out in the Australian Patent Office Manual of Practice and Procedure (the Examiner’s Manual). 

IP Australia has also advised that the Commissioner of Patents will review the Examiner’s Manual to ensure its practice and procedures are reflected clearly and consistently in the relevant sections, as well as indicating that it will consult with key stakeholders on any proposed changes.

It will be interesting to see if IP Australia makes changes in its approach to prior art considerations when assessing manner of manufacture, which is a bone of much contention between applicants and the Australian Patent Office. 

We will keep you updated on developments regarding any changes of practice at the Australian Patent Office or opportunities for consultation. 

In the meantime, if you have any questions about the patentability of computer implemented inventions in Australia and how this might impact your current or future patent applications, please contact Mark Williams at mark.williams@pof.com.au 

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.