20 October 2018

Representative Body of Australian Patent Attorneys Seeks to Intervene in Pivotal ‘Software Patent’ Appeal

Balancing interestsOn 19 October 2018, the Institute of Patent and Trade Mark Attorneys of Australia (IPTA) filed an interlocutory application seeking leave to intervene in the appeal (no. NSD734/2018) by Encompass Corporation Pty Ltd against the decision of a single judge of the Federal Court of Australia in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421.  This appeal is of particular significance because it is to be heard by an expanded panel of five judges of the Federal Court, rather than the usual three judges.  Consequently, the decision could potentially overrule (or reconfirm) prior appeal decisions, and will be binding on all Australian courts and tribunals, other than the High Court.

As I reported last week, the Commissioner of Patents recently joined the proceedings as an ‘interested party’ – a development that I suggested may leave many other stakeholders, including numerous current and future applicants for patents on computer-implemented inventions, unrepresented in a case that could substantially shape the patentability of such subject matter for many years to come.  I therefore floated the idea that this presented an opportunity for an organisation such as IPTA to step and speak on behalf of other users of the Australian patent system.  And while I cannot take any credit – I am certain that IPTA would have already had its application in the works before my article was published – I am, naturally, very pleased to see that this has indeed come to pass.

It does seem, however, that the process of joining the proceedings is considerably more fraught for IPTA than it was for the Commissioner of Patents.  While the Commissioner was apparently able simply to ‘appear’ as an ‘interested person’, IPTA has had to make an application to intervene.  That application can be opposed by the principal parties to the appeal, and may be refused by the court.  In fact, the order issued by the court [PDF, 93kB] in response to IPTA’s application includes the following terms:

The application by the Institute of Patent and Trade Mark Attorneys of Australia (IPTA) to intervene on this appeal, pursuant to rule 9.12 of the Federal Court Rules 2011 (Cth), be stood over to the first day of the appeal.

On or before 5pm on Wednesday 31 October 2018, the IPTA file and serve written submissions of no more than 5 pages in length on the question of manner of manufacture within the meaning of s 18(1)(a) of the Patents Act 1990 (Cth) that it would seek to rely upon if intervention were granted.

On the positive side, this process ensures that IPTA will have the opportunity to file short written submissions, although these may be ignored by the court if it decides not to grant the application to intervene.  On the other hand, IPTA will incur the full cost of preparing and filing its written submissions – in addition to the costs of its application and attending court in order to argue its case for intervention – without knowing whether they will receive any consideration by the court.

I have been informed by the current President of IPTA, Richard Baddeley, that while the appellant (i.e. Encompass) has consented to the intervention, the respondent (i.e. InfoTrack) has indicated its intention to oppose IPTA’s application to intervene.  For this reason, IPTA is proposing to confine its intervention to the five-page written submissions, and will not be requesting to present oral submissions at the appeal hearing.

Considering that IPTA’s submissions are likely to support the interests of patentees and patent applicants – the primary stakeholders whose interests are not already represented in the proceedings – it is not surprising that Encompass (the patent owner in the dispute) would support IPTA’s intervention, and InfoTrack would oppose it.  I would like to think, however, that the court will be mindful of the fact that (barring a High Court appeal) it will be setting down legal principles that could endure for a significant period of time, and would therefore welcome all the input it can get to assist it in this task.

Hopefully, then, IPTA’s application to intervene will be granted, and its submissions will be considered by the court in reaching its decision in the Encompass appeal.  It is also my hope that this may finally result in some much-needed clarity, consistency, and coherency in the Australian law, and examination practice, in relation to patent-eligibility of computer-implemented inventions.


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