IP Australia “Rokt” By Federal Court Decision On The Patentability Of Computer Implemented Inventions.

18 December, 2018

 

Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988

 

What you need to know

 

This is the first major victory in a challenge to IP Australia's stance on the patentability of computer implemented inventions.

 

The Federal Court of Australia has clarified that computer implemented business methods, which solve a technical problem with a technical solution, are patentable subject matter in Australia.

 

The Court found that the computer in Rokt’s invention was not just an "intermediary". Rather, use of the computer was "integral" because of the inventiveness in the way the computer carried out the business scheme.

 

Background

 

On 13 March 2013, the applicant (Rokt) applied for the grant of a patent entitled "A Digital Advertising System and Method" (Australian Patent Application No. 2013201494) (the Application). Since filing, the Application was amended and re-examined multiple times in the period from 2013 to 2017.

 

During re-examination, the Commissioner of Patents (Commissioner) decided that the Application should not proceed to grant (see Rokt Pte Ltd [2017] APO 34). Rokt subsequently appealed the Commissioner's decision to the Federal Court. The Commissioner also contended that the specification was insufficient. 

 

Patentability of Rokt's invention

 

The main method claim of the Application was a computer implemented method for linking a computer user to an advertising message by way of an intermediate engagement offer. The consumer response to the intermediate engagement offer was said to drive a higher level of engagement with a subsequent advertising message than if the advertising method was presented without the offer. 

 

The main issue in dispute in the proceedings was whether the computer implemented method satisfied the manner of manufacture test established in National Research Development Corporation v Commissioner of Patents(1959) 102 CLR 252 (NRDC). To comply with NRDC, the invention must create an artificial state of affairs of economic utility.  

 

Traditionally, computer implemented inventions have failed the manner of manufacture test as the "idea" sought to be claimed is abstract and the computer is a tool in which the invention is performed, rather than the invention being based in that computerisation. The Court in this case was required to carefully consider what the claimed invention was and the function of the computer as part of that invention. 

 

In considering the patentability of the invention, Justice Robertson found that the Commissioner had failed to focus on the claims of the patent as a whole. Significantly, the Court rejected the Commissioner’s submission that each integer of Rokt’s invention was well known in isolation. The Court considered this to be an incorrect approach for assessing patentable subject matter at [213] (emphasis added):

 

"Taken in isolation, a database, a client-server architecture, the running of the Javascript program on a publisher’s website and the creation of a ranking engine to rank abstract data to achieve an ordered list were each known as at December 2012 but, in combination, the distinction between engagement offers and general advertising, coupled with the algorithms making use of background data for personalisation and ranking was a new combination of new and previously existing components and a new use of computer technology.”

 

Commenting on Rokt's invention, his Honour concluded at [203] (emphasis added):

 

"…the substance of the invention was to introduce a dynamic, context-based advertising system, introducing a distinction between an engagement offer, without a direct advertising benefit, and an advertisement designed to lead directly to the sale of the product. This was an improvement in computer technology. It involved the new layer of engagement offers and the insertion of a widget into the publisher content to serve the engagement offer. A data-based scoring algorithm was used to decide what engagement offers to serve. This was an important improvement to existing computer-based advertising. The invention also introduced the recording and transmitting of user interactions with advertisements and the using of that data to select subsequent advertisements."

 

The Court highlighted that the invention met the requirement that it solve not only a business problem but also a technical problem using a computer. In particular, the Court stated at [207] (emphasis added):

 

"I find that there was a business problem of attracting the attention of the user and having the user choose to interact with the advertiser, but this problem was translated into the technical problem of how to utilise computer technology to address the business problem. The invention aimed to solve this technical problem through the introduction of the engagement offer and identifying what steps the software needed to execute in order to modify dynamically the website that the user was browsing while they were browsing it to, first, implement in the web browser or device the concept of the engagement offer, second, to implement in the computer system the necessary software for selecting engagement offers and advertisements for the given user based on the previous interactions with the system and the interactions of other similar users and, third, to have that system interact with the widget in the web browser in real time.”

 

Therefore, the Court concluded that the invention was patentable. The Court also briefly considered and then rejected the Commissioner's claim that the Application was insufficient. 

 

Expert evidence

 

His Honour commented that there was no discernible difference between the parties' position on the legal principles rather the resolution of the matter turned on the facts.

 

Therefore, a substantial portion of his Honour's decision related to the expert evidence submitted by each party.

 

The fact that much of his Honour's decision was influenced by the technical expert evidence suggests that a patentee of a computer-related invention should carefully consider submitting expert evidence during the prosecution stage to support the patentability of their invention.

 

Conclusion

 

In light of the Court’s finding that the claimed invention was patentable subject matter, the Commissioner’s decision was set aside and Rokt’s Application will proceed to grant.

 

For now, this decision appears to provide some clarity on the uncertainty that has surrounded what is, and is not, patentable when it comes to computer-implemented inventions in Australia. 

 

However, it is not known whether the Commissioner will appeal the decision. It also remains to be seen whether a decision of an expanded bench of the Full Court of the Federal Court of Australia in the appeal from Encompass Corporation Pty Ltd v InfoTrack Pty Ltd, when it comes, will invalidate the approach taken to the examination of computer-implemented technologies. It is expected that this decision will have considerable implications for the patentability of computer-related inventions in Australia. So stay tuned…