Commissioner of
Patents v Rokt Pte Ltd
The law relating to the patentability of computer-implemented
inventions is beginning to look settled in Australia following
Commissioner of Patents v Rokt Pte Ltd (Rokt) 1 .

The Full Federal Court in Rokt has
reversed a curious decision of the
primary judge in favour of a digital
advertising method being patentable
subject matter. In upholding the
Commissioner’s appeal, the Full
Federal Court affirms the law on
the patentability of computer-
implemented inventions as being
largely settled by the decisions
in Encompass Corporation, RPL
Central and Research Affiliates.

Schemes, like the digital advertising
scheme in Rokt, even if new
and ingenious, will not be made
patentable by being implemented
using computer technology.

Instead, for computer-implemented
inventions to be patentable,
the invention must lie in the
implementation of computer
technology. The primary
judge in Rokt found
that the claimed
invention Contact us info@pof.com.au
solved both a technical problem
and a business problem, and that
the claimed invention involved
steps that were foreign to the
normal use of computers at the
priority date. The claimed invention
was therefore considered to be
a manner of manufacture and
thus patentable subject matter.

To arrive at this finding, the primary
judge was swayed by expert
evidence provided by Rokt on
the state of the art of computers
at the priority date. However,
the Full Federal Court strongly
disagreed with this approach
of assessing patentable subject
matter and with the finding. The
use of expert evidence in assessing
patentable subject matter is a
practice that we are still seeing at
the Patent Office, but it is not routine
practice before the Courts. Thankfully,
it is unlikely that we will continue to
see this practice before the Courts.

The Full Federal Court confirmed
that the role of expert evidence in
construing the patent specification
and the claims should be limited.

Moreover, the assessment of the
characterisation of the invention was
said to be a matter of law.

This decision will not change the
current overarching practice of
the Patent Office in assessing
the patentability of computer-
implemented inventions. The claimed
invention in substance will still need to
lie in the implementation of computer
technology and not in the business-
related idea to be patentable.

However, this decision may change
the current practice of the Patent
Office in assessing the substance of
the claimed invention in the context
of the specification as a whole
and the relevant common general
knowledge and the prior art. We
hope that the Patent Office will now
give less weight to considerations of
the common general knowledge and
prior art when assessing patentable
subject matter.

As a result, we consider that
providing detailed information, when
drafting the description and claims of
the patent specification about how
the invention is implemented by the
computer technology, is likely to be
even more important now to support
an argument for patentable subject
matter. We will keep you updated on
developments regarding any changes
of practice at the Patent Office.

In the meantime, if you have any
questions about the patentability
of computer-implemented
inventions in Australia, please
contact Raffaele Calabrese at
raffaele.calabrese@pof.com.au Melbourne
Level 16
333 Collins St
Melbourne 3000
+61 3 9614 1944
Adelaide Level 5
75 Hindmarsh Sq
Adelaide 5000
+61 8 8232 5199
Sydney Level 19
133 Castlereagh St
Sydney 2000
+61 2 9285 2900
Raffaele Calabrese | Principal
BEng(Elec&ElectEng) MEng MIP FIPTA
raffaele.calabrese@pof.com.au Commissioner of Patents v Rokt
Pte Ltd [2020] FCAFC 86
1
Geelong 108 Gheringhap St
Geelong 3220
+61 3 9614 1944