APAA e-Newsletter (Issue No. 11, March 2019)
Federal Court Overturns Patent Office – Computer-implemented Invention Patentable!
Simon Reynolds and Ayesha Lee, Spruson & Ferguson (Australia)
In Rokt Pte Ltd v Commissioner of Patents  FCA 1988,[i] the Australian Federal Court has overturned a decision by the Commissioner of Patents in finding that the computer implemented business method in question is for patent eligible subject matter. In doing so, the Federal Court has clarified that the correct approach when assessing patentable subject matter is to consider the combination of integers as claimed, rather than each integer in isolation.
Rokt Pte Ltd (Rokt) is the Applicant of Australian Patent Application No. 2013201494 entitled “A Digital Advertising System and Method” (the Application). The Application was subject to a re-examination initiated by a Delegate of the Commissioner of Patents (Commissioner) which concluded that the patent application should be refused.[ii] Rokt appealed the Delegate’s decision.
The main method claim of the Application recites a computer implemented method for linking a computer user to an advertising message by way of an intermediate engagement offer. In summary, the method included computer implemented steps of:
- gathering engagement data based on attributes of the user and the content and user interaction with the content;
- communicating engagement data to an engagement engine of a remote advertising system;
- continuously evaluating the engagement data by the engagement engine to determine if a trigger has occurred;
- selecting, by the engagement engine, an engagement offer from a pool if the trigger occurs, the selection based on dynamic ranking of offers in the pool;
- inserting the engagement offer into the publisher content for view by the user;
- determining acceptance of the engagement offer based on consumer interaction;
- presenting an advertising message following the acceptance; and
- gathering user interactions by a script which is communicated to the remote advertising system for use in selecting subsequent advertisements.
The Court’s decision
The Patent Examiner’s Manual issued by the Australian Patent Office list a number of considerations to be made in determining whether a claim for a computer-implemented invention is for patentable subject matter. These include (i) whether the invention solves a technical problem within the computer or outside the computer or whether it results in an improvement in the functioning of the computer, and (ii) whether the computer is merely an intermediary or tool for performing the method while adding nothing of substance to the idea.[iii]
The Court heard evidence from experts for each side and concluded that
“…the substance of the invention was to introduce a dynamic, context-based advertising system, introducing a distinction between an engagement offer, without a direct advertising benefit, and an advertisement designed to lead directly to the sale of the product. This was an improvement in computer technology”[iv]
The Court noted that there is still a requirement that the claimed invention solve a technical problem with a technical solution. However, the Court concluded that Rokt’s claimed invention met this requirement as the specific business problem being addressed translated into a technical problem to be solved using a computer.[v] The Court also found that 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.[vi]
Notably, a submission by the Commissioner that each integer of Rokt’s invention was well known in isolation, was considered an incorrect approach for assessing patentable subject matter by the Court.[vii] Rather, it was found that the invention brought together some new elements and some known elements to form a working combination that had not previously been achieved and involved the use of computers in a way that was foreign to their normal use as at December 2012.[viii]
In light of the Court’s finding that the claimed invention was patentable subject matter, the Application was ordered to proceed to grant.
Reliance on expert evidence
A significant portion of this decision relates to the expert evidence submitted by each party. Reliance on expert evidence is a substantial change in practice as previously the test for patentable subject matter largely turned on the face of the specification. However, as the test for patentable subject matter has evolved to include consideration of the state of the art, so has practice.
As discussed above, the considerations made by the Court are consistent with considerations published by the Australian Patent Office but reached a different conclusion. In particular, the Court clarified that a business problem can be translated to a technical problem and that integers of a claim should not be considered in isolation.
This case also indicates that Applicants facing patentable subject matter objections from the Australian Patent Office may consider the submission of expert evidence during prosecution of the patent application. For example, the preparation of a statutory declaration outlining the state of the art at the priority date and an explanation of the technical problem and solution of the invention as claimed may be advantageous.
The Commissioner has recently requested leave to appeal the decision. Whilst further consideration may be in store, we consider this to be a positive decision by the Federal Court confirming that computer implemented business methods, which solve a technical problem with a technical solution, are patentable subject matter in Australia.
[iii] See http://manuals.ipaustralia.gov.au/patents/Patent_Examiners_Manual.htm, 184.108.40.206
[iv] Rokt Pte Ltd v Commissioner of Patents  FCA 1988, 
[v] Ibid, .
[vi] Ibid, .
[vii] Ibid, -
[viii] Ibid, .