Federal Court confirms that schemes are not patentable merely because they are "new and ingenious" and are implemented using a computer

By Jane Owen, Rebecca Currey

05-2020

The Federal Court of Australia has found a patent directed at a digital marketing scheme no more than a list of steps to be implemented by a computer using its well-known functions, and is not a patentable invention: Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86.   

In doing so, the Court of Appeal has overturned the decision at first instance, which we reported on here, in which his Honour had sought to distinguish the Rokt case from other recent decisions denying patentability (the decision at first instance in Encompass). In that case, the patent application was directed to a scheme intended to provide "business intelligence" implemented using a computer was found not to be a patentable invention.

Together, the Federal Court decisions in Rokt and Encompass now provide some clarity surrounding the patentability of computer implemented inventions.

The relevant question "is whether [the invention] 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: RPL Central at [96]."

In Rokt, the invention was a computer implemented "dynamic context based advertising system" that involved first engaging with the computer user though an

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