Computer Implemented Business Method Found to Involve Patentable Subject Matter

In the recent Federal Court decision Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 a computer implemented business method was found to involve a technical solution to a technical problem and so was found to have patentable subject matter.

Rokt’s patent application, which was filed just prior to the 2013 ‘Raising the Bar’ amendments to the Patents Act 1990, involves a digital advertising system and method. Claim 1 of Rokt's patent application concerns a computer-implemented method for linking a computer user to an advertising message by way of an intermediate engagement offer which is operable to drive a higher level of engagement with the advertising message than if the advertising message was presented without the offer. After obtaining acceptance the application was re-examined and found to lack patentable subject matter. Despite amendments thereto, by decision of a Commissioner’s Delegate Rokt’s application was denied grant on the basis that claim 1 is a mere scheme or business innovation rather than being a technological innovation and that the other claims do not add any patentable subject matter.

In overturning the Delegate’s decision the Judge applied the precedent of the Full Court in Commissioner of Patents v RPL Central Pty Ltd, which held that business methods can be patentable if they “involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation.”

The Judge criticised the Respondent’s emphasis on the similarities between isolated features of the claimed invention and the prior art, noting that such an approach is prone to losing sight of the claimed invention’s combination of techniques and components in innovative and previously unknown ways so as to provide a technical solution to a technical problem.

The Judge was satisfied that the Applicant’s expert evidence established that the invention introduced a dynamic, context-based advertising system, involving the introduction of a distinction between an engagement offer – not having a direct advertising benefit, and an advertisement designed to lead directly to the sale of the product. Such a method was held to be an improvement in computer technology and one that necessarily involved the use of computer technology as it could not otherwise provide a solution to the business problem on the intended scale.

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 the appeal the Respondent amended its notice of contention so as to introduce insufficiency as a ground for rejecting the application in the event that it was found to involve patentable subject matter. The Applicant argued that it was inappropriate to introduce such a ground so late in pre-grant re-examination proceedings and that it would be more appropriate for it to be raised in revocation proceedings. Nonetheless, the Judge was satisfied that the Applicant’s expert could be considered a person skilled in the art and that their evidence demonstrated that the disclosure was sufficiently enabling.

Author: Quinn Miller

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