The long-awaited decision in the appeal of Rokt Pte Ltd v Commissioner of Patents  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  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  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.
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.” 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.
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.
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.
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”. 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.”
- “The specification does no more than describe the architecture of the hardware in a most general sense.”
- “…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.”
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”.
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.
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.
 Commissioner of Patents v Rokt Pte Ltd  FCAFC 86 at .
 Ibid .
 Ibid .
 Ibid .
 Encompass Corporation Pty Ltd v InfoTrack Pty Ltd  FCAFC 161 at .
 Commissioner of Patents v Rokt Pte Ltd at 
 Ibid .
 Ibid .
 Ibid .
 Ibid .
Authored by Alana Gibson and Peter Treloar