Full Federal Court Weighs in on Patentability of Computer Tech
The Full Federal Court recently overturned a decision in the Federal Court regarding the patentability of computer implemented inventions.
This decision confirmed that inventions will not meet the patentable subject matter threshold required, where its originality and technical contribution or effect lies in ‘generic’ computerisation.
The technology company Rokt filed a patent application in 2013 for ‘A Digital Advertising System and Method’ which provided targeted advertisements to users through engagement officers. These widgets increased the likelihood that users would interact with advertising messages through its appearance on company websites and thereby increased product sales.
In 2017, the Patent Office decided the patent should not be granted on the basis the invention did not meet the threshold of a manner of manufacture within s18(1)(a) of the Patents Act 1990 (Cth). This decision was successfully appealed in the Federal Court where the primary judge considered the evidence of an expert witness to decide whether the invention should amount to “technological innovation”.
The Commissioner of Patents sought leave to appeal to the Full Federal Court.
The Full Federal Court’s Judgement:
Overturning the primary judge’s decision, the Full Federal Court held the primary judge erred in allowing the expert evidence to be used to determine the construction and characterisation of the invention as he was not in a position to legally categorise the claimed invention.
The Court also considered whether the claimed invention was a mere scheme or business method as this will only be patentable when the invention lies in computerisation. Furthermore, the invention must be an improvement in computer technology rather than “a mere tool in which the invention is performed”.
This means, even if a scheme is new and ingenious, it is not made patentable merely because it is implemented using computer technology. In examining the substance of the invention, the Court found Rokt’s invention was merely a marketing scheme applied to computer technology which did not meet the patentable subject matter threshold.
What does this mean for computer technology?
There is no definitive test as to what will satisfy the manner of manufacture requirement under s18(1)(a) of the Patents Act 1990 (Cth) and be patentable.
What is clear from this invention, however, is that computer implemented inventions using generic computer technology that fail to specify how the invention improves or uses computer technology in a new way, are unlikely to be patentable.
Businesses and tech innovators may need to rely on other intellectual property rights such as copyright to protect their information.