New lease of life for software patents in Australia

During a re-examination procedure initiated by the Commissioner for Patents, Rokt Pte Ltd’s (Rokt) patent application^[1] for a digital advertising system and method was refused on the grounds that it did not define a manner of manufacture. Rokt appealed and the Federal Court agreed, finding that the invention lay in the computerisation and that a person skilled in the art would have been able to implement the invention based on the specification.

In arriving at the finding for Rokt, Justice Robertson made the following key observations.

Matter of substance

The question of a manner or manufacture should be addressed as a matter of substance, requiring a determination of where the ingenuity or inventiveness lies.^[2]

Importantly, Justice Robertson cautioned against taking a focus on elements of the prior art in isolation lest the combination of techniques or components in an innovative and previously unknown way is overlooked.^[3] Here, it was recognised that the invention brought together a combination of new and known elements to form a working combination that had not previously been achieved, involving the use of computers in a way foreign to their normal use.^[4]

Technological innovation

It is not enough to simply put a business method into a computer; the invention must lie in the computerisation. Essentially, computer implemented business methods must provide an improvement in computer technology.^[5]

In contrast to the approach taken by many Examiners at IP Australia, Justice Robertson recognised that although the invention solved a business problem, being how to attract the attention of a user and have that user choose to interact with an advertiser, it also solved the technical problem of how to use computer technology to address the business problem.^[6]

Justice Robertson found that the invention solved this technical problem by determining what steps the software needed to execute in order to provide a single platform in which user engagement data could be coupled with transactional data and user context data to provide a personalised ranking of engagement offers to the user.^[7]

Echoing RPL Central,^[8] Justice Robertson held that “[t]he use of computers was integral, rather than incidental, to the invention in the sense that there is an invention in the way in which the computer carries out the business scheme”.^[9]

Comment

This decision provides much relief to applicants, practitioners and perhaps IP Australia Examiners too, providing a clear example of patentable subject matter where the invention resides in the computerisation of a business method.

Notable, however, is the heavy reliance on expert evidence submitted by the two parties, particularly in determining what constituted prior art at the priority date of the application. This approach provides compelling support for the relatively new practice adopted by Australian Examiners of considering prior art when assessing subject matter eligibility, as discussed in an earlier article here. But it also offers applicants a persuasive avenue for convincing Examiners as to the patentability of an invention, albeit at a potentially significant monetary cost to the applicant.

^[1] Australia Patent Application No. 2013201494

^[2] Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 at [201]

^[3] Ibid, para 202

^[4] Ibid, para 212

^[5] Ibid, para 201

^[6] Ibid, paras 206 and 207

^[7] Ibid, para 207

^[8] Ibid, para 212

^[9]Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177