An enlarged Full Bench (five judges) of the Federal Court of Australia today handed down its much-anticipated judgement in the appeal case Encompass Corporation Pty Ltd v. InfoTrack Pty Ltd, in which it upheld the finding of the trial judge that the patents-in-suit do not relate to patent-eligible subject-matter (i.e. not a “manner of manufacture”) under Australian law.

This case focused on the question of whether a method in the field of information retrieval and data management, including data visualisation, was proper subject-matter for a patent. Specifically, the patents concerned a method of comparing the data relating to specific entities (such as individuals or companies) stored in different databases and assessing whether records of the different databases in fact related to the same entities, e.g. despite discrepancies in the data stored in the databases. A complicating factor, in this case, was that the patents claimed the invention in the rather abstract context of a “method of displaying information relating to one or more entities”. And indeed, the particular claim formulation, in this case, appears to have created issues for the Court’s assessment of the substance of the invention. Interestingly, the Court notes in its judgement at [77] that it does not attempt to “set out the metes and bounds of patentable computer-implemented inventions”, but rather just considers whether the primary judge correctly applied the principles to the case at hand.

This decision means that the issue of patentability for ‘computer-implemented’ or software-type inventions remains somewhat murky in Australia. Inventions in this area have received very unsympathetic treatment by IP Australia (i.e. the Australian Patent Office) in recent years following a decision of the Federal Court in 2015. Indeed, the practice of IP Australia in this area has been somewhat out of step with the practice of the Patent Offices of major trading partners, such as the United States and Europe. Regrettably, this decision will likely only encourage IP Australia in its current approach, meaning that obtaining patents in this area will remain challenging in the immediate term. There may, of course, yet be an appeal to the High Court of Australia in this case, and we shall monitor developments with interest.