26 May 2020
Introduction
The Federal Court of Australia has found a patent directed at a digital marketing scheme no more than a list of steps to be implemented by a computer using its well-known functions, and is not a patentable invention: Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86.
In doing so, the Court of Appeal has overturned the decision at first instance, which we reported on here, in which his Honour had sought to distinguish the Rokt case from other recent decisions denying patentability (the decision at first instance in Encompass). In that case, the patent application was directed to a scheme intended to provide "business intelligence" implemented using a computer was found not to be a patentable invention.
Together, the Federal Court decisions in Rokt and Encompass now provide some clarity surrounding the patentability of computer implemented inventions.
The relevant question "is whether [the invention] can broadly be described as an improvement in computer technology; whether the computer is a mere tool in which the invention is performed or whether the invention lies in the computerisation: RPL Central at [96]."
In Rokt, the invention was a computer implemented "dynamic context based advertising system" that involved first engaging with the computer user though an "engagement offer", and advertising that are selected and displayed responsive to the consumer's interaction with the engagement offer.
At first instance his Honour said that there was a business problem – attracting the attention of the use and having the user choose to interact with the advertiser – that this was translated into a technical problem – how to utilise computer technology to address the business problem. His Honour classified the invention as one in which the use of computers was integral to the invention in the sense that there is an invention in the way in which the computer carries out the business scheme.
On appeal, the Court said that that the way the computer software and hardware were described in the specification indicated that it was no more than a vehicle for implementing the scheme, and using a computer for its ordinary purpose [at 109], and so it was not a patentable invention.
In Encompass, the Full Court of the Federal Court said that generic computer implementation was not sufficient to confer patentability.
We note the Federal Court has not closed the door completely on computer implemented schemes. The Court stressed in Rokt that the Full Court in Encompass "did not purport to preclude a scheme implemented using computer software from patentability. It manifestly did not lay down principles of general application (at [77]). It was considering whether invention lay in the implementation of computer technology based on the disclosure of the specification." (at [114]).
However given this decision in Rokt, without some innovation in the computer technology implementing the scheme it is clear that the patentability threshold will never be crossed.
For further information, please contact:
Jane Owen, Partner, Bird & Bird
jane.owen@twobirds.com
