Australia: Dont Rokt the boat: developments in the patentability of computer implemented inventions (CIIs) in Australia

Last Updated: 17 May 2019
Article by Helen Macpherson and Isobel Taylor

With the continued rise of digital technologies and mining of big data, computer implemented inventions (CIIs) are being increasingly utilised in a wide range of industries. CIIs enable companies to deliver more personalised products and solutions to consumers, whether in the form of more personalised medical treatments and diagnostic tools in the pharmaceutical and healthcare industries or in the sphere of more personalised and targeted marketing.

There has long been a question mark over the patentability of CIIs in Australia. However, in a positive development for creators of CIIs in Australia, his Honour Justice Robertson of the Federal Court of Australia has recently overturned the Australian Patent Office's (APO) rejection of a patent application for a CII relating to a digital advertising system and method, finding that the application constitutes patentable subject matter (that is, it is a manner of manufacture). The decision of Rokt Pte Ltd v Commissioner of Patents provides a useful guide to companies seeking to patent (and so protect and monetise their investment in) CIIs as to what factors will be relevant to persuading a Court that such inventions are patentable subject matter.

Rokt's invention

Rokt Pte Ltd (Rokt) filed a standard patent application for "A Digital Advertising System and Method". Rokt's application related to a CII for a digital advertising system and method for linking consumers to targeted advertisements. At a contextually relevant point in their browsing experience, consumers were presented with an intermediate engagement offer (not itself an advertisement) to gain their attention and then, only if the consumers responded positively to the engagement offer, was the consumer presented with a targeted advertisement. The choice of both engagement offer and advertisement was tailored to the consumer based on data collected about their previous engagements. The aim of including the engagement offer as an additional intermediate step in the process was to increase interest in the final advertising offer, thus increasing engagement and, ultimately, revenue.

The APO considered that claim 1 of the application did not disclose a manner of manufacture within the meaning of section 18(1)(a) of the Patents Act 1990 (Cth) and that the remaining claims did not add any patentable subject matter to the substance of the invention. The APO refused to grant the patent on this basis. These findings were the key issues for consideration in the Federal Court appeal.

Justice Robertson's decision

After hearing from the expert witnesses and the parties' submissions, Justice Robertson observed that there were no substantial relevant differences between the parties' submissions as to the legal principles to be applied to determine whether a claimed invention is a manner of manufacture and is patentable subject matter. His decision ultimately turned on an application of these principles, in particular as set out in the earlier RPL Central and Research Affiliates decisions, to the claimed invention in the Rokt application, and an analysis of the facts as to the current state of digital advertising technology at the priority date of the application, as presented by the parties' two expert witnesses.

The key questions which Justice Robertson considered in reaching his decision on patentable subject matter were:

  1. whether the contribution to the claimed invention was technical in nature;
  2. whether the invention solved a "technical" problem within the computer or outside the computer;
  3. whether the invention resulted in an improvement in the functioning of the computer, irrespective of the data being processed;
  4. whether the invention required merely "generic computer implementation", as distinct from steps which are "foreign" to the normal use of computers; and
  5. whether the computer was merely the intermediary, configured to carry out the method using program code, but adding nothing to the substance of the idea.

Justice Robertson ultimately preferred the arguments and evidence of Rokt to that of the Commissioner of Patents (Commissioner), observing that the Commissioner's "focus tended to be on issues of separate or indeed discrete differences or distinctions rather than on the claim or claims as a whole and as a matter of substance" and that "a focus on elements known as at December 2012 [the priority date] in isolation tends to lose sight of the combination of techniques or components in an innovative and previously unknown way" (at [202]).

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. However, his Honour considered that, 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.

Further, in considering each of the questions set out above, Justice Robertson found that:

  1. while Rokt's invention solved a business problem (of attracting the attention of consumers and having them choose to interact with advertisements), it was translated into a technical problem (of utilising computer technology to address the business problem). The key technical problem addressed by the invention was that of providing a single platform in which user engagement data could be coupled with transactional data and user context data, in order to provide a personalised ranking of engagement offers to the user. This technical problem was solved by introducing two databases – the tracking database and the objects database – and designing two engines – the ranking engine and the engagement engine – which accessed and manipulated the data in these databases to rank and select engagement offers;
  2. the substance of the invention was an improvement in computer technology, so in that sense the invention involved steps which were "foreign" to the normal use of computers. The invention introduced a novel architecture for the advertising system, through the new layer of engagement offers. Further:
  3. the use of a data-based scoring algorithm to decide what engagement offers to serve presented an important improvement to existing computer-based advertising; and
  4. the invention introduced a novel architecture for an advertising system, through the recording and transmitting of user interactions with advertisements and using that data to select subsequent advertisements;
  5. the use of computers was integral to carrying out the invention. In the first instance, the database that was the source of both engagement objects and historical/tracking data were critical components of the invention. It was not feasible for a non-digital implementation (that is, one which did not involve the use of computers) to store and manage large amounts of tracking data collected from real-time interactions with digital devices, or to manipulate large quantities of data for context-sensitive decision making; and
  6. the computer was not merely acting as an "intermediary". Further, storage and manipulation of data at the magnitude and speed that was required to implement the method could only be done on a computer. The data analysis could not be performed without a computer, particularly having regard to the gathering, manipulation and subsequent use of the data by the engagement engine.

Key takeaways

This decision contains some valuable lessons for prospective patentees of CIIs. In particular, the decision emphasises again the importance of specifying the technical problem (not just the business problem) solved by the CII and the role the computer plays in solving this technical problem. However, we will have to wait to see whether Justice Robertson's decision remains the final word on Rokt's application, as the Commissioner of Patents has sought leave to appeal his Honour's decision.

In addition, another important decision regarding the patentability of CIIs is set to be handed down later this year, after a panel of five federal court judges (including Chief Justice Allsop) heard an appeal in the case of Encompass v InfoTrack in November 2018. The fact that a five-judge bench (rather than the usual three-judge bench) heard the appeal highlights the significance of the issue of the patentability of CIIs.

In that case, the Full Court was called upon to consider the correctness of his Honour Justice Perram's decision that a CII which involved a linking together of three computer methods (the use of a network representation, the querying of remote data sources and the use of a purchasing step) in a series, where none of the individual methods was new, was not a manner of manufacture. We will provide a further update when this decision is handed down.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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