When can you patent an invention implemented by a computer – Encompass Corporation v InfoTrack (September 2019)

11 December 2019

The patentability of computer-implemented inventions has long been a tricky issue for innovators and entrepreneurs.

While a recent decision by the Full Bench of the Australian Federal Court (Encompass Corporation v InfoTrack)[1] affirmed existing principles about the patentability of computer-implemented, the subject remains as thorny as ever.

Put simply: mere instructions to apply an abstract idea (or the steps of a method) using generic computer technology for its well-known functions is not a manner of manufacture, which renders it un-patentable.

What was the invention in question?

In Encompass Corporation v InfoTrack, the relevant invention was a method and apparatus for displaying information, which (as it was claimed):

(a)   Provided “business intelligence”

(b)   Overcame a technical challenge by identifying and accessing relevant information across multiple data sources in a user-friendly manner

(c)   Involved a mechanism of matching names with personal information (even if misspelt)

(d)   Was agnostic about how the method should be implemented

(e)   Was implemented through an “electronic processing device” (although no further details were provided and no particular software or programming to perform the Invention was claimed).

Was the invention patentable?

Computer-implemented inventions can only be only patentable if, among other things:

  • They are novel
  • They involve an inventive step
  • They are useful
  • They have not previously been secretly used
  • They are a ‘manner of manufacture’.

Currently, many computer-implemented inventions are not patentable because they are not a ‘manner of manufacture’.

It was on this basis that the Full Bench found that this particular invention was not patentable.

So what is a manner of manufacture?

The Full Bench affirmed the guidance of previous decisions regarding what a manner of manufacture is. Principles of this guidance include:

(a)   There is no exact formula about what a manner of manufacture is

(b)   A “manner of manufacture”:

(i)   is not about defining what a manner of manufacture is

(ii)   a manner of manufacture is about:

A   Whether the invention is proper subject matter according to developed principles for the grant of a patent

B   The substance of the invention – not the form (it’s not unpatentable simply because it’s a “method… in an electronic processing device”).

(c)   “An artificially created state of affairs of economic significance” or “economic utility” are not definitions of manner of manufacture or the only considerations. They can, however, be a useful guide about the true character/patentability of the invention.

(d)   A physical or concrete effect is not necessarily required, but can explain why a mere “abstract, intangible situation” is not a patentable manner of manufacture.

How is ‘manner of manufacture’ assessed in computer-implemented inventions?

For computer-implemented inventions to be deemed a ‘manner of manufacture’, we are guided by the following:

(a)   They must be more than the implementation by a computer of an un-patentable abstract idea (such as a business method or a scheme)

(b)   They must be more than just using a computer to perform maths, calculations or logic

(c)   They must be something more than just using a computer for its well-known functions

(d)   They must represent an improvement in computer technology.

Lessons learned from Encompass v InfoTrack

In Encompass v InfoTrack, the Full Bench:

(a)   Held that the relevant claims were no more than un-patentable instructions to apply an abstract idea (the steps of a method) using generic computer technology for its well-known functions.

(b)   Considered that it is probably inappropriate to look to the prior art and common general knowledge when considering whether the Invention is an ‘improvement in a computer’.

(c)   Cautioned against conflating the issues of novelty or an inventive step with ‘manner of manufacture’.

But in this instance, the Full Court did not:

(a)   Provide clarity around when computer-implemented inventions are patentable, holding that the appeal “does not provide the occasion for this Court to set out the metes and bounds of patentable computer-implemented inventions”.

(b)   Decisively prohibit the use of prior art in assessing the patentability of computer-implemented inventions.

In light of this, we expect (and IP Australia has indicated) that patent applications for computer-implemented inventions will continue to be problematic for the foreseeable future.

[1] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161