Encompass and the drafter’s burden.

By: BARRY EAGAR

The much awaited decision of the Full Federal Court is now available. In Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161, the Court dismissed an appeal by Encompass Corporation Pty Ltd and SAI Global Property Division Pty Ltd (the “Appellants”) against a finding by a single judge of the Federal Court that, inter alia, the claims of two innovation patents define inventions that were not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.

Much of the commentary bemoans the fact that the decision did not provide guidelines for practitioners and IP Australia. However, this author believes that the decision implies some strong advice for patent attorneys.

It is worth considering the subject matter as it was described in one of the innovation patents. For expediency, the Court considered just one of the innovation patents, because the innovation patents were similar. The specification of that innovation patent exemplifies a process for displaying information relating to one or more entities.

The process is a mechanism for displaying a graphical network representation to a user. Users can select entities of interest on the representation. Determining and performing searches is by an electronic processing device to return additional information to the user. This makes it easy for an individual to access relevant data regarding entities of interest. The system can be utilised to rapidly search disparate data sources. Thus, information from a range of different sources can be included on a common network representation for easy visualisation by the user.

The Court made much of the fact that the description did not get into the detail of how the process should be implemented. For example, in paragraph [22] the Court “observed” that the description is “largely agnostic” as to how the method should be implemented. The Court cited a number of steps in the description where this was mentioned. Phrases such as “any appropriate manner”, “any one of a number of manners”, “any suitable mechanism”, and “any suitable manner” were used in the description when describing steps of the exemplified process.

In paragraph [23] the Court pointed out that “the specification leaves it to the user to implement the method in the way he or she might choose to do so, assisted by broadly-expressed and non-limiting suggestions or possibilities“. In paragraph [26], the Court referred to the specification making it clear that the processing system could be formed from any processing system such as a suitably programmed computer system, PC, web server, network server, or the the like.

The Court pointed out that the claims do not characterise the electronic processing device that performs the method. As the Court said, the specification makes it clear that “any suitable processing system” may be used. Furthermore, the Court noted that the various suggested ways in which the method can be implemented are not essential integers of the claimed invention.

The Court accepted the respondent’s submission that the method claims are “no more than an instruction to apply an abstract idea (the steps of the method) using generic computer technology.” Encompass attempted to attribute computer functionality to the method by the computer determining additional information relating to the same entity. However, the Court pointed out that such a step would simply form part of a method in which “an uncharacterised electronic processing device” is employed as an intermediary to carry out the method steps. Encompass also argued that the claimed method cannot be implemented using “generic software”. The problem with this approach was that the claims do not “secure, as an essential feature of the invention, any particular software or programming that would carry out the method. It is left entirely to those wishing to use the method to devise, and then to implement, a suitable computer program for that purpose.”

During oral argument, Encompass submitted that the claimed method is, itself, a high-level description of a computer program. The Court did not accept this characterisation. Their honours said that with this approach the method is really an idea for a computer program. The user is left with carrying out that idea in an electronic processing device. Patentable subject matter is not provided simply because the method is a “method…in an electronic processing device”, which itself is not characterised. To find otherwise would be to elevate form over substance.

Encompass contended that the primary judge incorrectly inquired as to whether implementation of the claimed method results in “an improvement in the computer”, as referred to in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (Reseach Affiliates). However, the Court said that this inquiry must be seen in the context of the discussion in Research Affiliates. That discussion was “directed to elucidating the distinction between mere schemes, abstract ideas and intellectual information on the one hand, and, on the other, possibly patentable, subject matter.” The Court also said that the inquiry must be seen in the context of his Honour asking concurrently and alternatively the question posed in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177: does the claimed method “merely require generic computer implementation”? The Court said that the claimed method did merely require generic computer implementation, which is clear from the Court’s reading of the specification, and so cannot be patentable subject matter.

Patent attorneys need to make sure that their drafts dig into the workings of at least the software that is used to implement the claimed invention. The software should be characterised, if possible, in such as way as to emphasise the technical nature of the software. In other words, those features of the software that result in the processor working in a non-conventional way should be elucidated. Clearly, this matter teaches us that a “black box” approach to electronic processes may very well lead to a set of claims that do not define patentable subject matter.

“Manner of manufacture” or “patentable subject matter” is to be distinguished from the requirement of an “enabling disclosure”. It may well be that a person of ordinary skill in the art could put the invention into practice. However, to assume that is enough for an adequate description is to conflate the two requirements of manner of manufacture and sufficiency. At the very start of the client engagement, a patent attorney should be making enquiries of the inventor(s) as to whether “generic computer implementation” is all that is required to enliven the invention. If so, the invention may not pass muster as patentable subject matter. If not, care should be taken to ensure that the patent specification provides a full description of the non-generic aspects of the invention, emphasising how they contribute to the technical field of the invention. That is, after all, the raison d’être of our patent system.