2 min read

An Australian court has provided a clear signal that inventions derived from machine learning activities can be subject to valid patent applications, provided they satisfy the regular indicia of inventiveness and novelty, whilst lacking a human inventor.

In Thaler v. Commissioner of Patents [2021] FCA 879, Justice Beach adopted an expansive view of the Patents Act, to hold that the concept of inventor can include, within its ambit, the notion of a suitably programmed computational device.

It is evident from the design of advanced AI systems such as Alphafold and AlphaGo, that the frontier of machine learning systems is in a continued state of rapid evolution. Whilst his honour spent significant portions of the judgement attempting to define the evolving concept of Artificial Intelligence, he was clear in holding that the innovative product of such systems can be subject to protection, whilst simultaneously lacking a human “inventor”.

In a distinct recognition of the importance of such advances to a society, his honour noted at [56]:

Now I have just dealt with one field of scientific inquiry of interest to patent lawyers.  But the examples can be multiplied.  But what this all indicates is that no narrow view should be taken as to the concept of “inventor”.  And to do so would inhibit innovation not just in the field of computer science but all other scientific fields which may benefit from the output of an artificial intelligence system.

The contrast between this liberal interpretation of our Patents Act’s application to machine learning inventions, as compared with the courts lack of clarity in the general field of software type of inventions is quite stark. However, the decision provides clear directions to the Australian Patent Office that AI advances should be readily patentable.

Authored by Peter Treloar

2 min read

Managing Intellectual Property (MIP) IP Stars publication has listed Shelston IP once again as a Tier 1 firm for both patent and trade mark prosecution. Four of our Principals have been recognised individually as IP Stars.

MIP’s IP Stars is the leading resource and most respected guide in the IP profession. Their worldwide survey of IP practitioners is used as a key benchmark for the industry.

Congratulations to all our IP Stars for being recognised as leaders in the IP industry:

Paul Harrison

Paul is a Principal and head of the chemical biotechnology team. He has over 35 years’ experience in the protection and enforcement of IP rights in Chemical Engineering and Chemistry technologies and is valued by his clients for his strategic and pragmatic approach to intellectual property.

Sean McManis

Sean heads Shelston IP’s Trade Marks team. He has extensive experience in assisting clients with trade mark protection and selection. He has been recognised by Managing Intellectual Property as an IP Star for the last 6 years and was a finalist in the 2020 Client Choice Awards for Best IP Specialist.

Charles Tansey, PhD

Charles is a Principal and experienced patent attorney with 25 years’ experience in the drafting, prosecution, enforcement and defence of patents in Australia and overseas. His technical experience across a wide range of chemistry related technologies is sought out by domestic and multinational clients.

Peter Treloar

With over 25 years of experience, Peter is an authority in Patents in Australia and New Zealand for complex electronics, computer science, and optics, with a particular bent for complex mathematical material.

Shelston IP is proud to announce that we have been reappointed as one of the exclusive IP service providers to CSIRO. As readers know, CSIRO is Australia’s leading multidisciplinary research organisation, with more than 5,000 talented people working out of centers in Australia and internationally. CSIRO plays a vital role in enhancing collaboration within the Australian national innovation system, and as a trusted advisor to government, industry and the community.

We are delighted to continue our long association with CSIRO.

We believe our appointment reflects the caliber of our attorneys and the consistent high quality of service that we provide to our clients, as exemplified by our recent ranking by Managing IP as a Tier 1 firm for patent prosecution in Australia (https://www.shelstonip.com/news/shelston-ip-tier-one-firm-patents-trade-marks/).

Please do not hesitate to contact our attorneys and lawyers for advice on any IP-related issues.

Authored by Peter Treloar and Charles Tansey, PhD

4 min read

The long-awaited decision in the appeal of Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 has finally been handed down, with the Full Federal Court finding the application to be “a marketing scheme”, and establishing that the claimed invention is not patentable subject matter.

The Full Federal Court has handed down their judgement in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86, overturning the decision of the primary judge and establishing that the claims are not a “manner of manufacture” and therefore not patentable subject matter.

The case involved a patent application entitled “A digital advertising system and method” belonging to tech company, Rokt Pte Ltd. (Rokt). The application related to a computer implemented system and method that linked users to online advertising by presenting an “engagement offer” when a user accessed a website. The engagement offer was targeted based on a user’s previous interactions. It provided a context-based advertising system in which users who were more likely to engage with advertising were shown specific offers to increase engagement over traditional methods of digital advertising.

In 2017, an unsuccessful hearing decision issued in which the Delegate of the Commissioner of Patents decided that the application was not patentable on the basis that it was not a “manner of manufacture”. In 2018, Rokt successfully appealed the outcome of the hearing decision to the Federal Court, which ruled that the invention of the application was directed to patentable subject matter. Disagreeing with the Federal Court’s judgement, the Commissioner of Patents appealed the Federal Court’s decision to the Full Federal Court.

The judgement closely followed the guidance of the Full Court’s earlier decision of Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 (Encompass) (issued late last year) in assessing patentable subject matter by focusing on the disclosure and detail provided by the specification, assessing whether the invention is a scheme, and then considering the implementation of the scheme in the computer.

Overturning the primary judge

Ultimately, Rares, Nicholas and Burley JJ established that the primary judge erred in his findings in the original decision by relying too heavily on the opinion of Professor Verspoor, Rokt’s technical expert, in adopting her answers to the questions which characterised the substance of the invention. The primary judge was also found to have relied on the technical problem and solution identified in the specification, without addressing the question of whether the technical solution was actually claimed.[1]

They found that the primary judge did not engage in any analysis of the central question of whether invention was found to lie in the implementation, or whether it amounted to simply “an instruction to ‘put’ the scheme into computer technology.”[2] Their Honours emphasised the danger in adopting an expert’s opinion without additional legal analysis, noting the importance of the legal approach to understand the invention under assessment of manner of manufacture.[3]

Generic software

The decision emphasised that consideration of the common general knowledge should be used only for construing the specification, and not to provide characterisation or evidence of “’generic software’ or the use of computers for their ‘well known’ purpose.” Instead, they defined these terms as a reference to computer technology that is utilised for its basic, typical or well-known functions, rather than referring to common knowledge in the art.[4]

Following the decision of Encompass, their Honours considered the matter of whether the claimed method was implemented using generic software. The Full Court observed in Encompass that the claims of the invention did not define any particular software of programming to carry out the invention, and so it was left up to those using the method to implement a suitable computer program for the purpose of carrying out the method.[5]

Agreeing with this approach, the problem addressed by the invention was characterised as enhancing consumer engagement levels. The solution was thereby determined to be the provision of an intermediate “engagement offer” targeted to a user interacting with digital content.

A marketing scheme

In light of these observations, the invention was classified as “a marketing scheme”.[6] This gave rise to a key consideration in assessing patentable subject matter: whether the computer is a mere tool in which the invention is performed, or whether the invention lies in the computerisation.

Following the approach laid out in Encompass, their Honours came to some strikingly similar conclusions regarding the detail in the specification:

  • in our view nothing about the way that the specification describes the computer hardware or software indicates that either is any more than a vehicle for implementing the scheme, using computers for their ordinary purposes.”[7]
  • The specification does no more than describe the architecture of the hardware in a most general sense.”[8]
  • “…the claim provides no content to suggest a different conclusion. Despite its length and detail, it contains no integer that serves to characterise the invention by reference to the implementation of the scheme beyond the most general application of computer technology utilised in an online environment.”[9]

Although it was determined that the specification represented a solution to problems in marketing, the lack of detailed description suggest that the scheme in which this solution was achieved did not involve the use of computer technology “other than as a vehicle to implement the scheme”.[10]

In drawing a direct parallel between the position of Encompass, their Honours concluded that the claimed invention amounts to an instruction to carry out the marketing scheme, and that the invention provides no more than a list of steps which may be implemented using computer technology for its well-known functionality.[11]

The decision brings the case in line with recent decisions in the patentable subject matter arena, and leaves applicants with the often difficult task of determining whether the inventive concept lies in the idea, or in the implementation.

Rokt have until 18 June to appeal the decision.

[1] Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 at [95].

[2] Ibid [96].

[3] Ibid [98].

[4] Ibid [91].

[5] Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 at [100].

[6] Commissioner of Patents v Rokt Pte Ltd at [108]

[7] Ibid [109].

[8] Ibid [110].

[9] Ibid [111].

[10] Ibid [110].

[11] [115]

Authored by Alana Gibson and Peter Treloar

4 min read

In a recent Australian Patent Office decision of Facebook, Inc. [2020] APO 19 (21 April 2020), a Delegate for the Commissioner of Patents (the Delegate) found that claims to a method that helps applications share information are directed to patentable subject matter based on the technical improvement provided, despite concluding that the claims only required generic computer implementation.

The new decision sees the Delegate ask key questions to determine the substance of the invention. Whilst the invention was found not to be technical in nature, and only to require generic computer implementation, it was considered that the invention addressed a technical limitation and provided a technical improvement. In the end, the invention was found to constitute patentable subject matter under Australian law.

The Application

The subject of the long-awaited decision was Australian patent application no. 2014209546 (the Application) entitled “Conversion tracking for installation of applications on mobile devices” in the name of Facebook, Inc (Facebook). Facebook requested a hearing back in August 2018, reaching an impasse with the Examiner after a fourth Examination Report was issued. The only matter under consideration was the outstanding patentable subject matter / manner of manufacture objection.

The Application provides a method which enables applications to communicate with each other by accessing a shared memory. Most applications, when installed on a mobile device, are “sandboxed”, which means that application data and code execution are isolated from other applications. As such, the applications do not have the ability to communicate with each other. This can make it difficult for advertisers to track whether their advertisement is successful in getting a user to download a new app.

Facebook’s invention enabled data to be written to a shared memory location that is outside of the application’s sandbox, allowing them to share information with each other. So, using an example from Facebook’s hearing submissions, when a user sees an advertisement for Uber while browsing Facebook, and then downloads the Uber application by clicking on the advertisement link, Facebook can know that the Uber application has been installed and pass this information back to Uber.

The Decision

The decision of the Delegate relied upon 5 key questions in assessing whether the invention was a manner of manufacture. There were taken from the considerations discussed in Aristocrat Technologies Australia Pty Limited[1] (Aristocrat). These questions included:

  • Is the contribution to the claimed invention technical in nature?
  • Is the computer merely the intermediary, configured to carry out the method, but adding nothing of the substance of the idea?
  • Does the claimed invention merely require generic computer implementation?
  • Does the invention result in an improvement in the functioning of the mobile device?
  • Does the claimed invention solve a technical problem in the functioning of the computer?

The Delegate concluded that the claims allow for advertising attribution and conversion tracking, but considered that this was not technical in nature.[2] Although accepting that the use of the computer was intrinsic to the claimed method, he was not convinced that the steps of the claim (including executing data and installing an application) were more than generic computer implementation.[3]

However, upon consideration of whether the invention resulted in an improvement, the Delegate agreed that the method performed something new. There was enough detail to show that the device was now able to do something it could not do previously, and provided a technical improvement.[4] There was also agreement that the inability for some applications to communicate information was a technical limitation faced by application developers. Interestingly, the Delegate recognised that the “sandboxing” (or isolating) of applications still exists in light of the method being utilised, but that the invention works around the existing system.[5]

In light of the clear technical limitation along with the ability to perform something new, there was found to be a technical improvement in the device.

Key Points

Although the claims in this instance were not considered to be technical in nature, this does not mean that they did not address a specific technical problem. The key, in this case, was including enough information in the claims to specify that the method concerned a specific type of application (the type that could not communicate with each other). This addition made it clear to the Delegate that the invention solved, or worked around, a precise technical limitation.

Further, the decision provides a bona fide example that satisfying all the points outlined in Aristocrat is not necessary to show that the invention is patentable subject matter. The fact that the computer was intrinsic to the method and that there was a clear technical improvement provided by the method was enough to establish that the invention was patentable subject matter. This reiterates the importance of providing specific technical details when drafting a patent specification to ensure that the technical improvements provided by the invention are clear and unambiguous.

It will be interesting to see whether a similar approach is applied by the Full Court when it hands down its judgement in Commissioner of Patents v Rokt Pte Ltd later in the year.

[1] [2016] APO 49.

[2] Facebook, Inc. [2020] APO 19 (21 April 2020) at [79].

[3] Ibid [80] to [82].

[4] Ibid [83].

[5] Ibid [84] to [85]

Authored by Alana Gibson and Peter Treloar

Shelston IP congratulates its valued client Finisar Australia on being the recipient of the Prime Minister’s Prize for Innovation. The team at Finisar, which included Dr Simon Poole, Mr Andrew Bartos, Dr Glenn Baxter and Dr Steven Frisken, were awarded the prize at a ceremony on 17 October 2018 for their development of wavelength selective optical switches in the early 2000s. The switches use a dispersive prism to separate different colours of light and a liquid crystal on silicon chip to switch the different colours between optical fibres. The optical switches are now in use across the globe and have helped to increase the capacity and reliability of communications networks.

Shelston IP is proud to have assisted Finisar with the protection of their IP around the wavelength selective switch technology and many other inventions.

Authored by Peter Treloar

Australian courts have recently taken a dim view of competitors claiming that the patentee has made unjustified threats of patent infringement. It is now clear that, in relation to the assessment of damages, it is necessary for the defendant to show any threats made by the patentee were directly the cause of loss or damage to the defendant.

In Mizzi Family Holdings Pty Ltd v Morellini (No 3) [2017] FCA 870, damages relating to the unjustified threats were at issue. Mizzi held a patent for a sugar cane planting machine and sued Morellini for infringement. At first instance, it was found that Morellini’s machine did not infringe the patent and that Mizzi had made unjustified threats of patent infringement. (It was later found on appeal that Mizzi’s patent was invalid for false suggestion.) Mizzi had caused advertisements to be placed in trade journals, warning off potential customers of being in patent “infringement danger” if they were to buy competitive machinery to that disclosed in Mizzi’s patent application.
In light of a recent precedent, Morellini needed to establish causation between the threats and the damages claimed. The judge refused to find any liability even though customers did not want to take up the defendant’s machine, and “they were a bit cautious because they were waiting for all this to be over”. Although the judge accepted a general reluctance to deal with the invention, there was no finding that the reluctance was attributable to any threats.
The net effect of this decision is that it establishes the need for evidence of actual causation between the threat of patent infringement and the resulting loss by the
potential competitor. This is good news for patent holders but sets a high threshold for those wishing to invoke the unjustified threat ground in dealings with a patentee.

This article by Shelston IP Principal, Peter Treloar, first appeared in Managing Intellectual Property magazine, September 2017 issue.

Authored by Peter Treloar