Software patent allowed in Australia for tracking user action

Software patent allowed in Australia for tracking user action

Software patent allowed in Australia for tracking user action

In a welcome turn of events, a recent Australian Patent Office decision, Facebook, Inc. [2020] APO 19, found that a system for tracking the installation of applications on mobile devices via advertisements constitutes patent eligible subject matter.

The outcome is a win for patent applicants and inventors of computer-implemented inventions because it demonstrates that an invention can constitute patentable subject matter even if it addresses a business problem and only requires generic computer implementation.

Background – looking outside the sandbox

The patent application, titled ‘Conversion tracking for installation of applications on mobile devices’, relates to a system for tracking whether a user has installed an application on their mobile device as a result of interacting with an advertisement for that application.[1] For example, while using a social networking application, a user may be presented with an advertisement containing a link to download a mobile application from an external application store.[2] This external application store depends on the operating system of the user device, such as iOS™ or Android™, and provides no feedback back to the social networking application as to whether the user actually installed the application via the link in the advertisement.

Cookies are commonly used to track users across multiple websites and browsers. However, native applications, which are specifically designed for a mobile operating system, are unable to access the cookies of another application. Moreover, most native applications, when ordinarily installed on a mobile device, are ‘sandboxed’, which means that they are not able to communicate information with each other. This makes it difficult for an advertiser to determine whether a user interacting with their advertisement has used a link in the advertisement to download an application. 

Facebook’s invention allows a native application executable to be concurrently downloaded with instructions that, when run, record an indication of a successful installation in a shared memory location of the mobile device that is accessible by native applications from within a sandbox.

The State of the Art – not all computers are created equal

The Delegate of the Commissioner of Patents noted that an understanding of the state of the art was important when assessing an invention’s contribution. This approach is not unexpected, as the Federal Court had previously found a method of digital advertising patentable by referring to expert evidence.[3]

After the hearing, the Delegate formed a view that Facebook had not made any submissions on the state of the art. On 10 May 2020, the Delegate wrote to Facebook, requesting submissions as to the inventiveness of the claims in view of a prior art document.[4]

Facebook was able to explain that a mobile device operating system cannot do the same things as a Microsoft Windows™ operating system on a desktop or laptop computer. In particular, it was clear that a Windows™ environment is not limited by sandboxing.

Considerations – can generic computer implementation still provide a technical improvement?

The Delegate referred to five factors relevant in assessing whether an invention constitutes patentable subject matter. These questions include:[5]

  • Is the contribution to the claimed invention technical in nature?
  • Is the computer merely the intermediary, configured to carry out the method, but adding nothing to the substance of the idea?
  • Does the claimed invention merely require generic computer implementation?
  • Does the invention result in an improvement in the functioning of the mobile device?
  • Does the claimed invention solve a technical problem in the functioning of the computer?

We previously reported here how these factors may be applied to non-computer implemented inventions in Technological Resources Pty Ltd v Tettman [2019] FCA 1889.[6]

The Delegate considered that tracking advertising attribution and conversion tracking is not technical in nature,[7] and addresses only a business problem. However, he also noted that that “the result that the invention provides is different from the substance of the invention.”[8] Rather, he considered that the sandboxing of native applications, although implemented deliberately by mobile device manufacturers, is a “technical limitation” faced by application developers. The Delegate was satisfied that bypassing this technical limitation provides a technical improvement in the mobile device.[9]

Perhaps surprisingly, the Delegate nevertheless held that the claims “only require generic computer implementation”.[10] While the Delegate accepted that the computer was intrinsic to the claimed method, nothing further was said on the significance of this point.[11]

Interestingly, the Delegate agreed with Facebook that the substance of the invention was incorrectly characterised by the Examiner as it did not reflect the current claims. Although the Delegate noted that there is no evidence that the device operates more efficiently, he was satisfied that the substance of the invention is a technical improvement in the functioning of the mobile device.[12]

Has the threshold for patentable subject matter been relaxed?

The Australian Patent Office tends to reject as unpatentable inventions that appear to involve only generic computer implementation or where the substance of the invention is a business improvement.[13] However, this decision demonstrates that an invention that addresses a business problem can constitute patentable subject matter even if it only requires generic computer implementation.

While there has been some debate over the significance of prior art when considering manner of manufacture, Facebook’s comments on the prior art appears useful in this instance as they provided the delegate with a contextual understanding of the environment within which the invention operates. In our article, which can be viewed here, we discuss how Apple had previously been successful in overcoming a patentable subject matter objection with respect to producing an animation on an interface, by addressing the prior art.[14]

However, it is also important that any purported technical improvement is adequately defined in the claims. Thus, it reinforces the importance of ensuring that the technical character of the invention is adequately captured when drafting the patent specification.

Furthermore, the decision also confirms that not all of the factors recited by the Delegate must be satisfied, and the Applicant only needs to show that an application should be accepted on the balance of probabilities.[15]

If you have any further questions about this decision, or would like to discuss particulars of any patentable subject matter objection you are facing in Australia, please contact one of DCC’s ICT attorneys.

[1] Facebook, Inc. [2020] APO 19 at [5] (‘Facebook’).

[2] Ibid [6]-[7].

[3] Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988.

[4] Facebook (n 1) [69].

[5] Ibid [79]-[85].

[6] Technological Resources Pty Ltd v Tettman [2019] FCA 1889.

[7] Facebook (n 1) [79].

[8] Ibid [59], [79].

[9] Ibid [85].

[10] Ibid [82].

[11] Ibid [81].

[12] Ibid [83].

[13] BGC Partners, Inc. [2018] APO 27.

[14] See, eg., Apple Inc. [2018] APO 54 finalised in Apple, Inc. [2019] APO 32.

[15] Facebook (n 1) [2].

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