Rokt clarifies manner of manufacture test

Summary

The Federal Court judgment in Rokt Pty Ltd v Commissioner of Patents [2018] FCA 1988 (Rokt) has clarified that computer implemented business methods, which solve a technical problem with a technical solution, are patentable subject matter in Australia.

In a win for Rokt, the Federal Court overturned a decision of the Commissioner of Patents (Commissioner) which had refused Rokt’s patent application for a digital advertising system and method on the basis that it did not satisfy the “manner of manufacture” test. Rokt’s patent application was ordered to proceed to grant, and the Commissioner was ordered to pay Rokt’s costs.

Rokt is a welcome relief for inventors wanting to protect their software innovations. The Commissioner has sought leave to appeal Rokt, so we will need to wait to see, if the Full Federal Court affirms Rokt, or not. It will also be interesting to see the Full Federal Court’s decision (with an extended bench) in the appeal from Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421, when it is delivered in mid 2019.

Background

The main issue considered in Rokt was whether the computer implemented method claimed in Rokt’s patent application satisfied the “manner of manufacture” test established in National Research Development Corporation v Commissioner of Patents(1959) 102 CLR 252 (NRDC). To satisfy the test in NRDC, the invention must create an artificial state of affairs of economic utility. Previously computer implemented inventions failed the “manner of manufacture” test because the inventions claimed had not been based in the computerisation but rather the computer was seen as a tool which performed the invention.

Rokt’s patent application was for a computer implemented method for linking a computer user to an advertising message by way of an intermediate engagement offer. Justice Robertson considered what the Rokt invention was, and the role of the computer in that invention.

Findings

At [203] Justice Robertson found (emphasis added):

“…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. It involved the new layer of engagement offers and the insertion of a widget into the publisher content to serve the engagement offer. A data-based scoring algorithm was used to decide what engagement offers to serve. This was an important improvement to existing computer-based advertising. The invention also introduced the recording and transmitting of user interactions with advertisements and the using of that data to select subsequent advertisements.”

His Honour found that although the invention solved a business problem, it also solved a technical problem, that being, to use computer technology to solve a business problem. In particular, at [207] Justice Robertson held (emphasis added):

“I find that there was a business problem of attracting the attention of the user and having the user choose to interact with the advertiser, but this problem was translated into the technical problem of how to utilise computer technology to address the business problem. The invention aimed to solve this technical problem through the introduction of the engagement offer and identifying what steps the software needed to execute in order to modify dynamically the website that the user was browsing while they were browsing it to, first, implement in the web browser or device the concept of the engagement offer, second, to implement in the computer system the necessary software for selecting engagement offers and advertisements for the given user based on the previous interactions with the system and the interactions of other similar users and, third, to have that system interact with the widget in the web browser in real time.”

In finding that Rokt’s invention was patentable, Justice Robertson clarified that the correct approach when assessing patentable subject matter is to consider the combination of integers as claimed, and to consider the invention as a whole. He disagreed with the approach taken by the Commissioner which focussed on whether each element of Rokt’s invention was part of the prior art in assessing whether the invention was patentable subject matter under the “manner of manufacture” test.

Specifically, at [212] & [213] Justice Roberston stated (emphasis added):

“In addition, known components had been integrated into a single system in an innovative and previously unknown way. 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.

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 but, 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.

Takeaways

Given the reliance on expert evidence in Rokt, applicants for computer-implemented business method patents should consider submitting expert evidence during the prosecution of their patent applications in order to convince the Patent Office of the patentability of their inventions.

Inventors of business method software should also note that if their patent specification shows that their invention is implemented by a computer which is a technical solution to a technical problem then this may be considered patentable.

Please contact a member of our Intellectual Property team should you wish to discuss how the Rokt decision may impact the ability of your business to apply for a patent in respect of a computer-related invention, or for any other for any patent-related matters.

This article was written by Helen Kavadias, Partner. 

Helen Kavadias

P: +61 2 9138 2905

E: hkavadias@hwle.com.au

Important Disclaimer: The material contained in this publication is of a general nature only and is based on the law as of the date of publication. It is not, nor is intended to be legal advice. If you wish to take any action based on the content of this publication we recommend that you seek professional advice.