The Full Court of the Federal Court in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt Appeal) has unanimously held that Rokt’s ‘digital advertising system’ implemented using computers for their well-known functions, was not patentable. This decision reversed the decision of a trial judge which found Rokt’s invention was patentable.
We have previously discussed the difficulties of patenting computer implemented inventions (here)
A recent decision of the Australian Patent Office suggested a relaxation of its otherwise strict view of what’s required to patent a computer–implemented invention (which we discussed here)
However, the Rokt Appeal makes clear that computer-implemented inventions face significant hurdles to obtain patent protection.
The claimed invention
The claimed invention was a computer implemented method for linking a computer user to an advertising message. The method included:
- an engagement offer (e.g. an offer of a coupon, or voucher, survey or prize) is presented amongst digital content;
- the engagement offer is selected depending on the user, the content and the nature of the advertisement (using an ‘advertising system’);
- when the engagement offer is clicked, the consumer is presented with various advertisements selected based on behaviour, contextual and/or demographic attributes determined by the advertising system;
- a computer readable ‘widget script’ that is placed within publisher content, and executed on client browsers, which guides the process. This gathers and communicates engagement data to the advertisement system, including behaviour metrics (i.e. what the consumer sees and how it responds to it).
The Commissioner’s case
The Commissioner argued the invention was an advertising scheme, the key feature of which was displaying an engagement offer.
The invention used a computer and internet connectivity, but was not more than an instruction to apply an abstract idea or scheme.
Rokt’s case
Rokt argued:
- the invention was patentable, notwithstanding it was merely an artificially created state of affairs, because there was nothing to suggest it wasn’t patentable;
- there is a collection of hardware and software performing specific functions, including an engagement engine that evaluates engagement data against pre-defined rules;
- the engagement offer was not an advertisement, but the result of a designed engagement scoring and ranking algorithm.
The Court’s findings
The Court in the Rokt Appeal was clear that whether the invention was patentable, required the Court to characterise the invention as a matter of law. It was not a question of fact and expert evidence had a limited role, such as to explain to the Court technical concepts or to describe the state of the art as at the priority date.
The Court’s key criticism of the trial judge was that he relied too heavily on expert evidence to decide:
- how the invention was claimed and characterised in the specification;
- whether the invention solved a technical problem;
- that improving software, improved the computer;
- that the use of a computer was integral to the invention; and
- that the invention involved steps foreign to the normal use of a computer.
What is the correct approach?
The Court in the Rokt Appeal held that when considering whether a computer implemented invention is patentable, the following principles are important:
- Unpatentable computer implemented schemes or methods of business, can “appear to be dressed in the clothes of invention”.
- “An artificially created state of affairs of economic significance” and demonstration of a physical effect does not mean the invention is patentable.
- The purported technical solution must be claimed.
- Improving software to perform a new function is not sufficient for a patent.
- The question is not simply whether the invention could not be implement without a computer.
- A claimed method that is unpatentable does not become patentable because it’s implemented by the computer.
- When considering if the invention involves steps that are foreign to the normal use of computers, it is not just about whether the steps have not been performed by a computer previously. It’s whether a computer would not normally be used to perform those steps.
- If the invention is a scheme, it is only patentable if it 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.
The Court found the invention was no more than an instruction to carry out a marketing scheme, by using computers and the internet for their ordinary purposes. The patent as drafted, indicated that the system architecture, hardware and software used to effect the marketing scheme, were not part of the invention. The Court referred to Encompass,[1] which found that where claims do not specifically set out the essential software or programming, and the implementation is left to those wishing to use the method to devise a suitable program, then the invention is merely an instruction to use a computer for its well-known purposes.
What can we learn?
For many years, the Australian Patent Office has not liked granting patents of computer implemented inventions. It is likely the principles set out in the Rokt Appeal will be applied liberally by the Australian Patent Office to reject many patent applications for computer implemented claims. Advisors should be careful and pay close attention to the principles set out in the Rokt Appeal (and other relevant cases) before recommending their client incur the significant time and costs to apply for a patent of their computer implemented invention.
[1] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (2019) 372 ALR 646
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