Australia remains closed for business on computer implemented business method patents
Despite convening a special 5 judge bench for a recent appeal heard by the Full Federal Court, that Court's decision in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (Encompass) provides no promise for aspiring patentees of computer implemented business methods in Australia.
As a result of the consideration of the Full Court in Encompass, the situation remains that it more often than not, this type of subject matter will be rejected at the Patent Office examination level and at Court level. The test remains simple: the computer implementation of an unpatentable abstract idea will be become patentable only if the computer is integral to the process, such that the implementation by computer is inventive (and not use of routine computing tools). It also appears that express disclosure of the code required for the computer implementation is likely to assist in overcoming the patentable subject matter objection.
The very recent decision of Justice McKerracher in Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956 (Repipe) has affirmed that the hurdle to overcome to achieve patentability of computer implemented inventions is high.
In Encompass, the Court was considering two innovation patents directed to a search system for providing and visualising business intelligence information. Specifically, the patents provided a method for searching across multiple separate databases (e.g. property ownership, corporate positions and police records) and displaying the information in a graphical network representation to indicate connections between entities.
At first instance Justice Perram (Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421) found that neither invention was a patentable manner of manufacture.
The Full Court declined to depart from the established approach to identifying patentable subject matter in relation to computer implemented inventions. In upholding the first instance decision, the court noted that NRDC[1], Research Affiliates[2], RPL Central[3] and Myriad[4] present a consistent picture of how the patentability of subject matter should be assessed.
This assessment does not change merely because the invention was implemented using a computer system. An invention must be considered as a matter of substance, not form, so an unpatentable abstract idea or mere scheme will not become patentable by implementation using generic computer technology
While the court accepted that the method described in the patents provided an artificially created state of affairs with economic significance through the creation of business intelligence network diagrams using data from disparate sources, it found that the invention amounted to no more than the computer implementation of an abstract idea or business method. Because the computer implementation of this method was described in purely generic terms, with no detail regarding the computer system itself, this could not elevate the invention to a patentable manner of manufacture.
In Repipe the Federal Court heard an appeal from a decision of a delegate of the Commissioner of Patents revoking two innovation patents because they did not claim a manner of manufacture. The patents related to a system for providing occupational health and safety documentation to employees in the field via a database linked to a portable computing device, such as a phone or tablet.
Justice McKerracher noted seven propositions relating to the patentability of computer-based inventions:
- Patentability is a question of substance, not form;
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