Game (not) over for computer-implemented inventions

Several recent Federal Court decisions concerning computer-implemented inventions have confirmed that the ‘normal use’ of a computer to implement (otherwise unpatentable) instructions, schemes or ‘abstract ideas’, will not confer patentability. Beyond abstraction being fatal, what are the lessons? 

Core lessons

• Computer-implemented inventions still face significant barriers to being found patentable.
  
  
• The enquiry into the patentability of computer-implemented inventions is a two stage process:
  
  
  1. Construe the specification and characterise the invention to determine whether or not the substance of what is claimed is a mere scheme, or business method.
     
     
  2. If so, consider if there is a manner of manufacture as invention lies not only in the scheme or plan, but also the means by which it was realised using computerisation.
     
     
• Patent specifications should be drafted to highlight the ‘technical problems’ overcome, the ‘technical benefits’ achieved and how the ‘computerisation’ is ‘beyond the normal use of a computer’.
  
  
• In the context of determining whether an invention is a manner of manufacture common general knowledge is to be used, “to the extent necessary, to construe the specification”.
  
  
• Expert evidence does not displace the Court’s role in determining what is patentable subject matter.

In a previous article, we discussed Encompass Corporation Pty Ltd v Infotrack Pty Ltd [2019] FCAFC 161, and expressed the hope that the then pending Full Court’s decision in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (Rokt). would offer further clarity on the patentability of computer-implemented inventions.

To a degree, that hope has been realised. In finding that Rokt’s digital advertising platform was not patentable, as it failed to disclose a ‘manner of manufacture’,[1] the Full Court has overturned an outlier decision in Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988, where Robertson J held that the platform was an ‘improvement in computer technology’ and therefore patentable.

Shortly after the Rokt decision was delivered, Justice Burley handed down Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (Aristocrat). Referencing the Rokt decision, the Court in Aristocrat overturned a decision of the Commissioner of Patents that innovation patents concerning an electronic gaming machine (EGM), including a combination of physical parts and computer software to produce a particular gameplay outcome, were not a manner of manufacture.

These recent cases provide further guidance on how software-related inventions should be assessed, with Rokt offering some clarification on the role of expert evidence and prior art in such assessments. It remains to be seen how the Patent Office will apply the Court’s remarks regarding the role of prior art in examining patentable subject matter.

Background to Rokt

Rokt’s patent application 

Rokt’s patent was directed to digital advertising systems centred around an ‘engagement offer’, which would be relevant to the user (such as coupons, discounts, surveys, games and other ‘click bait’).[2] When the user clicked on the offer, they would then be presented with an offer which had been ranked as most relevant to them, based in part on their behavioural or demographic attributes.[3] The specification disclosed the system comprising the invention at a very general level of abstraction.[4]

The application was rejected by the Patent Office as not concerning a manner of manufacture and Rokt appealed to the Federal Court.

Appeal to the Federal Court 

Robertson J held that the invention claimed in the application was a manner of manufacture and that the application should proceed to grant.[5]

Based on the extensive evidence of Rokt’s expert witness, Robertson J accepted that the substance of Rokt’s invention was an ‘improvement in computer technology’ as it introduced a new software widget which determined the most effective engagement offers for a given user.[6] This represented an alternative advertising technique to previous systems.[7]

Further, the invention claimed to be a solution to:

• a business problem of attracting the attention of a consumer; and
  
  
• a technical problem of how to utilise computer technology to solve that business problem.[8]

The technical problem was solved by providing a platform in which user data could be used to provide personalised engagement offers ranked by likely attractiveness,[9] and by providing those engagement offers and dynamically modifying the website the user was browsing to make those offers to the user.[10] For these reasons, his Honour concluded that the invention was a manner of manufacture and therefore patentable subject matter.

Rokt on appeal to the Full Court

In a unanimous decision, the Full Court overturned Robertson J’s decision, finding that the invention lacked patentable subject matter.

The Court held that his Honour had erred by treating the issue of how to construe and characterise the ‘substance of the invention’ as a matter of fact, rather than law. His Honour relied heavily on the evidence of Rokt’s expert witness, treating it as (almost) determinative of whether the claimed invention was a manner of manufacture. 

In rejecting this approach, their Honours emphasised that the construction of the specification and characterisation of the invention in issue remains fundamentally a matter for the Court, not an expert witness – the role of an expert witness is to place the Court in the position of the skilled addressee ‘acquainted with the surrounding circumstances as to the state of the art and manufacture as at the priority date’.[11] His Honour was also found to have fallen into error by premising his analysis of the technical problem solved by the invention on elements disclosed in the specification but not ultimately claimed.[12]

The Court briefly discussed the extent to which prior art is relevant to whether a computer-implemented invention is a patentable manner of manufacture. The Court referred to statements in Myriad Genetics and RPL Central which call for an assessment of prior art,[13] but emphasised that this requirement does not extend beyond a review of the common general knowledge to the extent necessary to construe the specification.[14] The Court also considered the observations in Encompass that the unpatentable invention in that case involved ‘generic software’ required to be devised by the reader of the claims.[15] Contrary to Rokt’s position that this represented a conflation of the requirements of s 40 with the question of manner of manufacture, the Court explained that this comment provided a ‘litmus test’ for whether the use of software in conjunction with hardware was simply a means of implementing an otherwise unpatentable scheme or business method.[16] Further, a reference in past cases to the use of ‘generic software’ or to the use of computers for their ‘well-known purpose’ is not a finding as to common general knowledge but a determination, based on a careful review and construction of the specification, of the computer being used for its basic functions.[17]

In considering the patent application in suit, the Court held that the invention (as claimed in claim 1) amounted to an instruction to carry out a marketing scheme ‘a list of steps to be implemented using computer technology for its well-known and understood functions’.[18]

The relevant distinction for the Court was whether the computer was a mere tool in which the invention was performed or the invention lay in computerisation.[19] Here, neither the specification nor the claims suggested that computerisation was anything other than a vehicle for implementing the scheme through the ordinary use of computers. The specification described the hardware to be used in a very general sense and identified prior use of similar software, which suggests that neither the software nor the hardware required to achieve the desired outcome formed part of the invention.[20]

The claims did not contain any integer relating to computer technology beyond general and abstract references to desired functions and outcomes.[21] Overall, the specification and claims amounted to little more than unpatentable abstract instructions to carry out a marketing scheme through the use of a computer.

Background to Aristocrat 

The decision in Aristocrat concerned an appeal from the Commissioner of Patents' decision on the patentability of four innovation patents owned by Aristocrat. The Delegate for the Commissioner found that each invention claimed in all claims of the patents was not a manner of manufacture, as the substance of the inventions were mere schemes (being games and game rules of gaming machines).[22]

Justice Burley overturned the delegate’s decision, finding that the subject matter of the claims in each of the patents was not a mere scheme.[23] In doing so, his Honour applied the two-step approach to patentability recently confirmed in Rokt:

1. First, to construe the specification and characterise the invention to determine whether or not the substance of what is claimed is a mere scheme, or business method.
   
   
2. Second, (if a scheme or business method), whether or not there is nonetheless a manner of manufacture as invention lies not only in the scheme or plan, but also the means by which it was realised using computerisation.[24]

As the EGM incorporated physical parts, it avoided being ‘nothing more than a scheme or mere idea’.[25] Importantly, the Court found that the skilled addressee would understand the invention as being a machine of a particular construction which implements a gaming function, rather than a generic computer-implemented invention.[26]

In doing so, his Honour observed that:

“It is difficult to see why the development of an implementation of an EGM that utilises the efficiencies of electronics technology would be disqualified from patent eligibility, when the old-fashioned mechanical technology was not. Such an approach would be antithetical to the encouragement of invention and innovation.” 

Key takeaways

When taken together, the Encompass, Rokt and Aristocrat decisions highlight that although the game isn’t over for computer-implemented inventions, significant challenges in obtaining patent protection remain. Patent protection will not extend to inventions where the computer or software element is no more than the ‘normal use of computers’ or the ‘computerisation’ of a scheme or plan.

Although the court will apply a case-by-case approach, to establish patentability, it will remain important to demonstrate how the computerisation contributes to the claimed invention: is the computer integral to the claimed invention (thus patentable), or is it generic use of a computer in relation to a business method or mere scheme (thus unpatentable)? Detailing how specific computer technology achieves technical solutions or benefits (unlike in Encompass or Rokt), or how the physical features of hardware interact with software to achieve the desired outcome (such as in Aristocrat), will likely assist.