The law relating to manner of manufacture in the context of computer implemented inventions continues to be controversial in Australia. On 12 December 2018, the Federal Court of Australia overturned a rejection by the Commissioner of Patents of a patent application directed to a computer implemented invention in Rokt Pte Ltd v Commissioner of Patents (Rokt). On 16 January 2019, the Commissioner of Patents, dissatisfied with the Federal Court’s dismissal of its approach to determining the patentability of such inventions, sought leave to appeal the Rokt decision to the Full Federal Court.
The Court in Rokt generally accepted the Commissioner’s submission on the state of the law on patentable subject matter (i.e. manner of manufacture) as laid out in Research Affiliates and RPL Central – particularly, that “it is necessary to understand where the inventiveness or ingenuity is said to lie” and “a mere business innovation is insufficient and a business method or scheme is not, per se, a proper subject for letters patent. Nor are abstract ideas. The issue is whether there is a technological innovation”.
The Court in Rokt, however, rejected the Commissioner’s approach of focussing on whether specific elements of a claim are novel at the priority date of the patent application when considering the patentability of the claim. Instead, the Court stated that focus should be placed on the claim as a whole so as to not lose sight of the elements of the claim being combined in an innovative and previously unknown way.
The Rokt patent application is directed to a computer-implemented method for providing targeted advertising messages by gathering engagement data of a computer user, evaluating the data, selecting and presenting an intermediate engagement offer to the user based on the data, and then presenting a targeted advertising message following the user accepting the engagement offer. This method of providing targeted advertising messages is more likely to result in the user interacting with the advertising messages and making a purchase.
During examination, a delegate of the Commissioner found that the substance of the claimed invention amounted to a business innovation, and not a patentable technological innovation.
The Court disagreed and instead found that the claimed invention solved both a technical problem and a business problem. The business problem was “translated into the technical problem of how to utilise computer technology to address the business problem”. The ingenuity of the claimed invention was found to lie in the new step of providing engagement offers, which requires the insertion of a widget into a webpage publisher to present the engagement offer to the user, and a ranking algorithm for selecting the engagement offer based on the engagement data.
To arrive at this finding, the Court considered expert evidence presented by both sides on the state of the art at the priority date of December 2012, and concluded that the claimed invention indeed involved the new use of computer technology at this date. The Court stated that – while in isolation the elements of the claimed invention were each known as at December 2012 – in combination, the elements formed a new combination and a new use of computer technology.
The use of expert evidence in assessing patentable subject matter in Rokt is a practice that we are seeing more of at the Patent Office, but has not been routine practice before the Courts. This evidentiary approach is largely the result of the Commissioner conflating the test for patentability of computer-implemented inventions with the tests for novelty and inventive step.
The practice may be short lived as we are expecting the decision of an appeal to the Full Federal Court in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd to be handed down later this year. This case had the unusual honor of both The Institute of Patent and Trade Mark Attorneys of Australia (IPTA) and the Commissioner providing submissions for consideration by the judges on what the proper approach should be for determining patentability of computer-implemented inventions. This case was heard late last year by an expanded panel of five judges so that it has the ability to overturn previous Full Court decisions,and may provide a new, workable and hopefully more reliable test to encourage innovation in Australia for computer-implemented inventions.
