Rokt rolled on appeal, but Full Federal Court clarifies software patent eligibility in Australia
The Full Court of the Federal Court of Australia has overturned an earlier decision in which Rokt’s digital advertising platform was found to be patentable subject matter. Our article on that earlier decision is here.
The appeal decision confirms recent case law, such as Encompass, which says that computer-related inventions must involve more than “generic computer implementation”. The decision also, however, clarifies that prior art information that is part of the common general knowledge can only be used to assist in construing a patent claim to determine the “substance of the invention”. It cannot be used to make a comparison like novelty or inventive step to determine the substance.
The issues on appeal
In the earlier decision before Robertson J, Rokt were successful in arguing that their digital advertising platform was patent eligible. Robertson J found in favour of Rokt on the basis that:
- although the invention solved a business problem, it also addressed technical difficulties, namely the requirement to integrate different data sources at a single platform to present relevant content to the user; and
- when the claims were properly construed, the substance of the invention lay in a new working combination of known elements, resulting in the use of computers that was foreign to their normal use.
The Commissioner of Patents appealed these findings, and also appealed against the primary judge’s reliance on expert evidence in assessing manner of manufacture.
Expert evidence is not to be relied upon to construe the claims and specification
Construction of the claims and specification is critical to identification of the “substance of the invention”. That is, when the specification is properly construed, is the invention as a matter of substance, rather than form, suitable subject matter for a patent, as opposed to a mere scheme or abstract idea?
The Full Court reiterated the principle that the answer to this question can be informed by expert evidence, but must ultimately be determined by the Court. They therefore rejected the primary judge’s adoption of Rokt’s expert evidence as to the substance of the invention.
Principles of patent eligibility for software
The Court then went on to consider the relevant principles for eligibility of computer-implemented inventions. Relevantly:
- Simply “putting” an otherwise unpatentable scheme into a computer does not confer patent eligibility (following RPL Central).
- Claims which recite no more than an instruction to apply an abstract idea or scheme are not patent eligible (following Encompass).
- References to “generic computer technology” or “well known and understood functions” of computers in the case law do not import a requirement that common general knowledge be taken into consideration, other than to assist in construing the specification.
- The key question is whether the invention described and claimed is in substance any more than a scheme that utilises computers in generic fashion.
Decision: the invention is a scheme, with no improvement in computer technology
The Court went on to consider the claimed invention in light of the background to the invention, and the problem said to be addressed by it, namely to enhance consumer engagement levels. The feature of the invention that solved this problem was the provision of an intermediate “engagement offer” targeted to the consumer interacting with digital content. In view of this, and the discussion in the detailed description, it was found that the invention was a marketing scheme.
Further, the lack of detail regarding computer implementation in the detailed description was held to be indicative that neither the described hardware nor software was any more than “a vehicle for implementing the scheme, using computers for their ordinary purposes.” The hardware architecture was described in only a very general sense, and the specification included statements to the effect that the claimed method could be “implemented on any form of suitable server computer capable of communicating with consumer devices (such as smart phones) using typical web server hardware.” Details of computer implementation were also found to be absent from the claim language, which was held to contain nothing “beyond the most general application of computer technology utilised in an online environment.”
Applying Encompass, the Court concluded that the invention as claimed was simply an instruction to carry out the marketing scheme, expressed at a level of abstraction which demonstrated that the claimed steps were to be implemented using computer technology for its well-known and understood functions.
Although the decision, on the whole, maintains restrictions for software patent applicants, an important finding is that common general knowledge is to be used only for the purpose of construing the specification and claims – not as part of a pseudo-inventive step test for determining subject matter eligibility.
For those seeking patent rights for software in Australia, it is now more important than ever to carefully consider what technical difficulties were overcome in implementing the technology, or what technical benefits result from any proposed implementation, and to ensure that these are described in the specification. Further, if the invention requires novel architecture or any other elements “beyond the normal use of computers” for its implementation, that should also be highlighted.