Move back to patentability of computer implemented business methods in Australia? Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988

In the recent Federal Court decision, Rokt Pte Ltd v Commissioner of Patents (which is the subject of an appeal), the Court provided guidance for the Commissioner to take a more open minded approach to considering patentability of these types of inventions. 

In this case, the Federal Court allowed an appeal from a patent office re-examination decision to revoke acceptance of a patent application for a "digital dynamic, context-based advertising system".  In so doing the Court provided some clarity in relation to the patentability of computer-implemented business methods which should assist patent applicants and attorneys in considering patentability.

Key takeaways

• This should effect a change in climate for the Commissioner of Patent's approach to patent protection for computer-implemented business methods - but there is unlikely to be any quick change to the manner in which patents of this nature are examined by the Australian patent office.
• Judgment on appeal to the Full Federal Court in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 which raises similar issues to this case is still reserved and this eagerly awaited judgement will be extremely important in assisting understanding as to the patentability of computer-implemented business methods are considered – it is the Full Court's opportunity to revisit RPL and Research Affiliates.

Background

The claimed invention in the Rokt case, the computer implemented "dynamic context based advertising system".  With a priority date of December 2012, the invention claimed a different method to then used computer based advertising.  As distinct from search based advertising (sponsored link advertisements or organic results returned from a user's key word searches) and display based advertising (eg banner advertisements displayed reactive to the content being viewed by the computer user), the method of advertising involves first engaging the with computer user through an "engagement offer" prior to any advertising being shown.  This engagement offer might be the offer of a coupon, competition, survey or provision of a sample.

The engagement offer is designed to capture a user's attention, but not to effect a direct advertising benefit.  It is during the course of the engagement offer that advertisements are selected and displayed responsive to the consumer's interaction with the engagement offer.

The advertisements, designed to directly lead to the sale of a product, are generated for the given user based on previous interactions with the system, and the interactions of similar users. 

The invention uses a widget in the publisher's site to monitor the user's interaction to determine when to display the engagement offer and to monitor the interaction with the advertisements displayed.

The purpose of the invention is the provision of a common platform to relate consumers visiting content on publisher websites to advertising derived from advertisers, making use of wide-ranging data to rank engagement offers.  The data generated is from the target consumer and other consumers interacting with the system and is to generate an engagement score and a revenue score to rank.

Before the Patent Office, the application had been rejected on the basis that the substance of the invention was a business innovation – the delegate found that while "the computer and server are doing novel things…these features are merely implemented by the “custom software”.

Since the Full Court's decision in Grant v Commissioner of Patents[3], it is settled law that a business method per se is not patentable subject matter.  Prior to RPL and Research Affiliates, computerised business methods were generally accepted as patentable subject matter, because the use of the computer created a technical effect and therefore met the manner of manufacture test from NRDC[4].  However these two Full Federal Court cases changed that practice in the Patent Office, so that patent application examination since 2014 has required the Patent Examiners to consider carefully whether the invention is simply putting a business method into a computer "to implement the business method using the computer for its well-known and understood functions"[5], and not patentable subject matter.

So the critical question to be determined in the Rokt case was whether the invention could be characterised as an improvement in computer technology, or whether it was just putting a business method into a computer.

On appeal

On appeal, Robertson J said that while there was a business problem – attracting the attention of the use and having the user choose to interact with the advertiser – that this was translated into a technical problem – how to utilise computer technology to address the business problem. 

Taken in isolation, Robertson J found that certain aspects of the invention were known - a database, a client-server architecture, the running of the Javascript program on a publisher's website and the creation of a raking engine to rank abstract data to achieve an ordered list were each known as at the priority date. 

However, a new, and key feature of the claimed invention was the introduction of an intermediate "engagement offer" that provided an alternative digital advertising technique to previous systems that solved both a business problem, and a technical problem and so his Honour found that there was a combination of new and previously existing components, and a new use of computer technology.

In this regard, his Honour said that "it is not simply enough to put a business method into a computer…the search is for an improvement in computer technology".

Rather, His Honour classified the invention as one in which the use of computers was integral to the invention in the sense that there is an invention in the way in which the computer carries out the business scheme.  The implementation of the invention was not possible without the use of a computer – and the substance of the invention involved the new functioning given to the computer. 

His Honour described the invention as:

It followed that the patent introduced a method which was foreign to the use of computers as at December 2012. Not only did it draw together different streams of information and put them together and worked with them in a way that was new, making the combination of these techniques new, but certain elements of the invention were also new in their own right. The concept and implementation of an engagement offer, the use of a widget to monitor continuously the user’s interaction with the website to determine when to display the engagement offer, the use of a widget to monitor the user’s interaction with the engagement offer, the offering of a choice to engage with or skip the engagement offer, and the monitoring of the user’s interaction with an advertisement to determine which subsequent advertisement to show were all new and innovative uses of computers.[6]

Implications of the decision?

Given the more liberal approach taken by Robertson J in this case to the "manner of manufacture" requirement, this may foreshadow a similar "loosening" of approach when the Full Court delivers its decision in the Infotrack appeal.

It is difficult to reconcile the Rokt decision with the decision at first instance in Infotrack.

Perram J at first instance in Infotrack found that the inventions in suit in that case were not a manner of manufacture – the invention in suit there was the method of a user being able to search multiple data bases (including third party databases) at the one time so as to be presented with a compiled report on information from multiple datasources.  .  The invention was a method by which a user could select from a representation of connected entities which entity it wanted searched so as to scope the search of multiple databases.

In that case, the Court held that the method (and apparatus) merely involved a concatenation of three other methods, none of which is new: the use of a network representation, the querying of remote data sources and the use of a purchasing step.  The Court's conclusion was that this did not result in an improvement in the computer and was not patentable subject matter. 

Note the difference in language used by the Court in Infotrack and Rokt to establish the required technical advance sufficient to meet the manner of manufacture test – "improvement in the computer" compared to "new functioning of a computer".

We expect that until the Infotrack decision is handed down, the Patent Office is unlikely to change its current cautious practice in examination of computer-implemented inventions.

We also note that the decision in Rokt has been appealed.