On Friday 13 September, the Full Federal Court released it’s much anticipated decision regarding manner of manufacture in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161, dismissing an appeal from a Federal Court judgment. The expanded bench (5 judges) upheld the primary Judge’s finding that a computer-implemented invention for displaying information was not patentable subject matter.

This appeal has been closely followed by those of us in the ICT space in the hope that it might clarify the correct approach to take in assessing what is patentable subject matter in Australia (i.e. a “manner of manufacture” test) in the context of computer implemented inventions.

In arriving at the conclusion that the invention did not involve a manner of manufacture, the primary Judge in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 relied on an approach –which the Institute of Patent and Trademark Attorneys of Australia (IPTA) considered to be erroneous – combining prior art considerations into the manner of manufacture test. For instance, his Honour remarked at [195]:

In this case, the method disclosed in the Patents (and the apparatus) result in the computer being used to do something it has not been used to do before. But it is not clear to me that in doing so they have improved the functionality of the machine. This is because the method (and apparatus) merely involve a concatenation of three other methods, none of which is new: the use of a network representation, the querying of remote data sources and the use of a purchasing step.”

Claims did not require particular software or programming

While the Full Bench in the appeal also concluded that the invention did not involve a manner of manufacture, and was at pains not to criticise the primary Judge’s findings, their conclusion relied heavily on the guidance espoused in earlier authorities, including Research Affiliates and RPL Central, rather than a commentary on the correct approach to assessing patentability of computer- implemented inventions. Their guidance included at [95]: “[w]here the claimed invention is to a computerised business method, the invention must lie in that computerisation.” (emphasis added) and that the claims “are, in truth, no more than an instruction to apply an abstract idea (the steps of the method) using generic computer technology” at [99]. Further, at [100], “the claims in suit do not secure, as an essential feature of the invention, any particular software or programming that would carry out the method”. This conclusion applied equally to the apparatus claims too, “which provide no more than an uncharacterised apparatus … to carry out the steps of the abstract method”, at [102].

What is the correct approach in assessing patentable subject matter?

The appellants criticised the primary Judge for inquiring whether the claimed method results in an “improvement in the computer” when assessing patentable subject matter. This approach has been utilised by the Australian Patent Office in recent times – i.e. the Patent Office considers prior art or common general knowledge when applying the Manner of Manufacture test (as provided in the Australian Patent Office Examiner’s Manual).

As a result, both IP Australia and IPTA (the peak body representing Australian patent attorneys) sought leave to intervene in the appeal proceedings – their submissions focussing on what ought to be the correct approach to the Manner of Manufacture test.

In dismissing the appeal, however, the Full Federal Court made little to no comment on the submissions of IP Australia and IPTA, and explained that the primary Judge was not combining prior art into the manner of manufacture test, but instead was seeking to determine whether the claimed invention was something more than “generic computer implementation” of an otherwise abstract idea. Noting at [111]:

“As we have said, in this part of his reasons the primary judge is to be understood as inquiring into and searching for possible patentable subject matter, such that the claimed method was something more than “generic computer implementation” of an abstract idea. It can be accepted readily that the three methods of the concatenation to which his Honour referred might not, in terms, encompass all the individual steps of the claimed method. However, we do not read his Honour’s reasons as suggesting that they did.”

Further, in relation to the primary Judge’s analysis at [195]-[197] of whether the “enhanced user experience” afforded by the invention (and which could potentially give rise to an improvement in the computer) resulted from a “combination of well-known computing mechanisms”, the Full Federal Court held at [112]:

“We accept that his Honour’s use of this language suggests that other, conceptually distinct elements of patentability might have intruded into his Honour’s consideration of whether the claimed method and apparatus were directed to a manner of manufacture: see, for example, the caution expressed in CCOM at 291, which was repeated in Research Affiliates at [111]. But, at the end of the day, we see no error in his Honour’s ultimate conclusion that no manner of manufacture is involved in the method and apparatus as claimed.”

Conclusion

As a result, this judgment endorses the earlier Research Affiliates and RPL Central cases, and the law is essentially unchanged. The vexed question of whether it is appropriate to include prior art considerations when assessing manner of manufacture (as is currently the practice at the Australian Patent Office) is still yet to be tested. It is possible this will be explored in the Commissioner’s appeal against a Federal court judgement in Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988, which overturned a decision of the Patent Office, deciding in favour of the patentability of ‘a dynamic, context-based advertising system’.

The take home message from this judgment is that it continues to be the case that an invention, which resides in an abstract idea (such as a business method), cannot be made patentable subject matter by incorporating features into the claims having generic computer functionality. It seems, however, that claims reciting particular software or programming steps for carrying out such a method may satisfy the manner of manufacture test.

Detailed information about how the invention is implemented by means of computer technology should therefore be provided in the description and claims to support an argument for patent-eligibility.