Patent attorneys in Australia (and indeed those with patents and pending patent applications in Australia) will be eagerly awaiting the outcome of the upcoming appeal before the Full Federal Court of Australia in the case of Commissioner of Patents V Rokt Pte Ltd, the hearing of which is scheduled to be held on 10-11 February 2020. Whilst the Full Federal Court’s written decision in this Rokt case is not expected to be handed down until at least a few months after the hearing, the decision is nevertheless eagerly anticipated due to its potential to offer much-needed guidance (and hopefully some positive news!) on what kinds of inventions are eligible for patent protection in Australia, particularly in the software and “computer-implement-invention” space.

It had previously been hoped that this much-needed guidance on what kinds of (particularly “computer-implemented”) inventions are eligible for patent protection in Australia would come when the Full Court handed down its earlier decision in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 in mid-2019. However, when the Encompass decision was handed down, it was widely viewed by patent attorneys and observers as a missed opportunity and a great disappointment. The reason is because, rather than taking the opportunity offered by the Encompass case to provide the much-needed clarity on the law in this area (and despite the fact an enlarged bench of 5 judges (rather than the usual 3) was assembled to hear the Full Court appeal in Encompass, which led most observers to believe in the lead up that the court did plan to provide the much-needed guidance), the Full Court’s (unanimous) decision in Encompass in the end was simply to affirm the first-instance judge’s earlier decision (finding that the invention in question did not relate to patentable subject matter) and to otherwise state that the Encompass case was not an appropriate vehicle to provide further guidance on the boundaries of patentability for computer-implement inventions.

Hopefully, though, the nature of the invention which is the subject of the upcoming appeal in the Rokt case, and consequently the issues which the Full Court will be required to consider, will mean that the Full Federal Court will (this time) be unable to avoid engaging with those issues, and in so doing provide (at least some) much-needed enlightenment, which those of us in the profession really need.

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