New guidance on patenting computer-implemented inventions (Facebook, Inc. [2020] APO 19)

14 May 2020

A recent Australian Patent Office decision of Facebook, Inc. [2020] APO 19 may signal a relaxation of its view on what’s required to patent a computer–implemented invention – so we’ve taken a closer look at what this could mean.

The claimed invention

The claimed invention was a method of tracking when an advertisement on a social media platform about a phone app (Advertised App), was clicked on by someone so they could download the Advertised App from an app store. It works as follows:

  • The Advertised App’s data includes instructions from the social media platform to store an indication the Advertised App had been downloaded in a “shared memory location” on the device; then
  • The social media platform retrieves information from the “shared memory location” about the download of the Advertised App and sends it back to the social media platform’s online system.

This process overcomes the difficulties of most apps being ‘sandboxed’ – a term that means when one app’s data (e.g. Facebook) is separate from another app’s data (e.g. Uber) and those two apps can’t directly communicate with each other (or have access to each other’s cookies).

The Examiner’s case

The Examiner argued that the claims lacked a manner of manufacture (and so were not patentable subject matter) because:

(a)          the substance of the invention was conveying a particular message to a particular computer;

(b)          an invention that merely transmits information, rather than the manner in which the data is transmitted, is not patentable subject matter; and

(c)           the invention circumvented a business rule (or deliberately set permissions of the device rather than any architectural limitation of the device) and did not overcome a technical limitation of the device.

The Delegate’s findings

The Delegate discussed the cases on patentable subject matter and manner of manufacture – you can read our earlier discussion of how these principles apply to computer-implemented inventions here.

The Delegate noted that:

(a)          “a claimed invention must be examined to ascertain whether it is, in substance, a scheme or plan, or whether it can broadly be described as an improvement in computer technology”; and

(b)          “there must be more than an abstract idea: it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed”.

The Delegate noted the importance of understanding the state of the art in respect of whether an invention is a manner of manufacture. It also distinguished between the result of the invention (being the tracking of advertisements that lead to the Advertised App being downloaded), and the substance of the invention (being a series of steps where data is received, executed, an indication is stored, and then that indication is transmitted through a different app along with user information).

In finding the invention was patentable subject matter:

(a)          the ‘computer’ (i.e. phone) was not merely the intermediary, and the use of the computer was intrinsic to the method claimed;

(b)          the device was able to do something it could not do previously;

(c)           the sandboxing of apps was a technical limitation and by working around the sandboxing, the invention is a technical improvement in the device.

However, notwithstanding that the invention was a manner of manufacture, the Delegate also found:

(a)          the claims only required generic computer implementation;

(b)          there was no evidence the device operated more efficiently,

(c)           there was no improvement of the device by it receiving executive data and sending it back.

What we can learn

In summary, this case suggests the Australian Patent Office may be relaxing its view of when computer-implemented inventions are patentable; that not all factors previously discussed for finding a patent of a computer-implemented invention need to be present; that using a generic computer implementation to solve a business problem can constitute patentable subject matter; and that the technical improvement offered by the invention must be properly defined by the claims.

Case citation