Aristocrat hits jackpot while Rokt gets rolled in patentable subject matter decisions

Rokt

Singapore based Rokt has had a vacillating experience with the Australian patent system. While unfortunate for the company and many other Australian patent applicants, the Full Federal Court decision in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt) clarifies Australia’s position in respect of the patentability of computer-implemented inventions.

The claims of Rokt’s Australian patent application no. 2013201494 are, at a high level, directed towards providing an engagement offer to a user of a website and presenting an advertisement to the user if the user accepts the engagement offer. For example, an engagement offer which includes a chance to win free flights may be presented to the user, and where the user selects the engagement offer, an advertisement may subsequently be presented. In the patent specification, it is stated that initiating engagement with the user in this way “results in a more positive and deeper engagement with advertisements subsequently presented to the consumer”, which increases the likelihood that the user will continue to engage with the advertisements.

Rokt’s patent application was initially refused by the Australian Patent Office in Rokt Pte Ltd [2017] APO 34 on grounds that the claims were not directed towards a manner of manufacture and were therefore not directed towards patentable subject matter. Rokt appealed the Patent Office decision in Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 and a single judge of the Federal Court found that the claims were directed towards a manner of manufacture (i.e. patentable subject matter). The Commissioner of Patents appealed the single judge’s decision to the Full Federal Court, which decided that the claims are “no more than an instruction to apply an abstract idea or scheme, using generic computer technology” and therefore are not a manner of manufacture.

The role of expert evidence in construing the patent specification and the claims

The Full Federal Court clarified that the role of expert evidence in construing patent specifications for questions relating to manner of manufacture is limited. This clarification was that the role of expert evidence is to familiarise the Court with the state of the art at the priority date, to assist the Court in construing the meaning of words that are terms in the art, and to explain technical concepts relevant to understanding the invention. The Court decided that the primary judge was mistaken in relying on expert evidence for a manner of manufacture determination. In view of the mistake, the Court highlighted that it is fundamentally a matter for the Court to determine and characterise the invention.

The role of common general knowledge for assessing manner of manufacture

The Full Federal Court also clarified the role of the common general knowledge in the context of manner of manufacture cases. Recently, it has been common practice for IP Australia to assess the manner of manufacture requirement by comparing the alleged contribution provided by the claim features to prior art documents.

In Rokt, the Full Federal Court clarified that the role of the common general knowledge in the manner of manufacture assessment is limited to allowing for an informed construction of the specification. This informed construction of the specification should be used as part of a two-step manner of manufacture test that appears to be applied by the Court in Rokt. The first part of the test is to assess whether the substance of the claimed invention is a scheme, where that substance has been determined based on the construed specification. If so, then the second part of the test is to determine whether an invention lies in the fact that it is implemented using a computer. As this approach is not quite consistent with how IP Australia determines manner of manufacture issues, it is anticipated that IP Australia will change its patent examination practice to reflect the outcome of this decision.

Applying this approach, the Full Federal Court firstly determined that Rokt’s invention was a “marketing scheme”. Upon review of the specification, the Full Federal Court then determined that the invention relied on computing hardware and software only for their “well-known and understood functions”, as “a vehicle for implementing the scheme”. Summarising the decision, the Full Federal Court determined that even if the scheme is new and ingenious, it is not made patentable merely because it can or must be implemented using computer technology.

Aristocrat offers hope

While Rokt’s invention was determined not to be a manner of manufacture, and confirms the Australian position on the patentability of computer-implemented inventions that utilise generic and well-known computing systems, computer-implemented inventions in many cases do constitute patentable subject matter in Australia.

In Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (Aristocrat) the Court determined that “mechanisms of a particular construction, the operation of which involves a combination of physical parts and software to produce a particular outcome” can constitute patentable subject matter. Four Australian innovation patents were considered in Aristocrat. The claims of each of these innovation patents are directed towards electronic gaming machines and include both hardware and computer-implemented claim features. Like in Rokt, the Court in Aristocrat looked to the specification to characterise the claimed invention for the manner of manufacture determination. The Court assessed the specification in accordance with the first test of the two-step test of Rokt, and determined that the invention was not a mere scheme that is implemented on computer hardware. Rather, the invention “is a device of a specific character”, including both “physical and virtual features” that is “built to allow people to play games on it”. The Court determined that these claim features, that work together to provide a particular outcome, distinguish the claims from being a scheme and therefore bring the claims into the realm of patentable subject matter.

Going forward

In light of Rokt and Aristocrat, it is clear that the description of a patent specification should provide technical details describing the mechanisms by which a computer-implemented invention improves computing technology, or uses non-standard computing hardware in a new and useful way. The Courts seem to suggest that the mechanisms of implementation of software features should be described explicitly in the specification in order to avoid an inference that the software features relate to “no more than an instruction to apply an abstract idea or scheme”.

Computer-implemented inventions that merely rely on generic computing hardware, and that do not provide a technical improvement, are unlikely to be considered patentable subject matter under current jurisprudence. On the other hand, the decision in Aristocrat shows that computer-implemented inventions that include software claim features that work in tandem with specialised hardware to provide a new and useful result may be considered patentable subject matter.