What the Rokt decision tells us about patent eligibility for software inventions

9 minute read  28.05.2020 Gus Lightowlers
In a significant ruling, the Full Court has again weighed in on the patent eligibility of software inventions, overturning a decision of a single judge of the Federal Court and deciding that Rokt's marketing scheme is not patentable subject matter.

Key takeouts


  • Even if a scheme is new and ingenious, it is not patent eligible merely because it must be implemented using computer technology.
  • It is critical that businesses filing patents that involve software adequately explain why the software provides a technical solution to a technical problem, and that potentially patentable complexities involved in the implementation of a scheme into a computer system are not watered down in the patent.
  • Businesses developing and filing patents for software will be positively affected by this decision if the Australian Patent Office updates its examination practice in response such that it no longer takes into account prior art as a matter of course when considering the patent eligibility of computer implemented inventions.

Background: Rokt's marketing scheme deemed not patent eligible

On 21 May 2020, the Full Court of the Federal Court of Australia (Justices Rares, Nicholas and Burley) overturned a decision of a single judge of the Court (Justice Robertson) relating to a computer implemented marketing scheme.

Rokt's claimed invention provides a means for a consumer to engage with an offer while browsing a website online before being targeted with advertising. The Full Court describes the claimed invention in a self-confessed uncharitable manner as 'click bait'.

The background to the Full Court's decision extends back to 2016, when in a Patent Office decision a delegate of the Commissioner determined that Rokt's advertising method was not patent eligible. Rokt successfully appealed the Patent Office decision to the Federal Court in 2018, where the primary judge overturned the Patent Office decision and decided that Rokt's claimed invention was patent eligible under Australia's manner of manufacture test. The primary judge's reasoning included five main points (summarised below) that supported his decision:

  1. The resolution of the appeal lay "largely in the realm of facts".
  2. Rokt's expert accurately described the inclusion of an 'engagement offer' as the substance of the invention.
  3. The invention involved the solution to both a business problem and a technical problem of how to utilise computer technology to address the business problem.
  4. The use of computers was integral rather than incidental to the invention.
  5. The integration of known components into a single system was innovative and previously unknown.

The Commissioner, represented astutely by Christian Dimitriadis SC and Chris Burgess, was then granted leave to appeal the primary judge's decision to the Full Court on the basis that:

  • the decision is inconsistent with existing Full Court authority;
  • there is public interest in the integrity of the Register of Patents; and
  • the decision has led to doubt as to the correct approach to be taken by the Commissioner.

The role of expert evidence for construction purposes

The role of expert evidence for construction purposes was considered by the Full Court in a significant amount of detail. The Commissioner submitted, and the Full Court agreed, that the primary judge erred in reasoning that the resolution of the appeal lay "largely in the realm of facts", when according to established principle it lay in the proper characterisation of the invention. The proper characterisation of the invention is a question of law for the Court, and not a question of fact for an expert.
In the first instance decision, Rokt and the Commissioner relied on expert evidence to support their patent eligibility positions. The primary judge preferred the evidence of Rokt's expert, a Professor in the School of Computing and Information Systems at the University of Melbourne. This preference and the reliance on expert evidence generally played a significant role in the primary judge's decision.

It has become routine for parties involved in patent disputes (both in litigation and oppositions) to engage software experts and file evidence to address the patent eligibility (or lack thereof) of computer implemented inventions. This significantly increases the costs associated with litigating and opposing patent applications for computer implemented methods. Also, somewhat controversially, the current practice at the Australian Patent Office when considering whether a claimed invention defines patent eligible subject matter is to approach the examination of 'manner of manufacture' in a manner similar to that formulated by UK authority (Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7).

The 'Aerotel' method includes identifying the 'contribution' to the art made by the claimed invention, which typically involves consideration of the common general knowledge and prior art by the Patent Office during examination.

The Full Court stated that there was force in the Commissioner's criticism of the primary judge, indicating that the primary judge had preferred the evidence of Rokt's expert in relation to the characterisation of the invention and did not provide separate consideration to this issue. The Full Court stated that the role of expert evidence in construing the patent specification and the claims is limited. Expert evidence, if required at all, is limited to assisting the Court to place itself in the position of the person acquainted with the surrounding circumstances as to the state of the art as at the priority date. Importantly, the question of construction remains with the Court.

Interestingly, as a result of information provided in the Background to the Invention section of the Rokt patent application, the Full Court did not require expert evidence to place itself in the position a person 'acquainted with the surrounding circumstances as to the state of the art' at the priority date. With regard to the state of the art, the Full Court indicated that two key points emerged from Rokt's description of the background to the claim invention, being that 1) real-time search based targeting of consumers was not part of the invention; and 2) the evaluation of attributes of consumers in order to direct advertisements to them was also not part of the invention. This conclusion drawn by the Full Court from the Background to the Invention section of the specification did not assist Rokt. The Rokt patent application did not include the disclaimer regarding common general knowledge, which is common practice in Australian patent drafting. It is unlikely that such a disclaimer would have made a material difference in this instance, as the 'Detailed Description' section of the Rokt patent application makes further reference to the "traditional digital advertisements" to distinguish the claimed invention from those methods, and the Full Court determined that no invention lay in the computerisation of the scheme.

The Full Court further indicated that the reference in recent Full Court decisions (RPL Central and Encompass) to using the computer for its “well-known and understood functions” involved consideration of computers having regard to their basic and well-known functions. Importantly, again with regard to the use of expert evidence, the Full Court explained that this does not require, "and should not be taken to encourage", a review of the common general knowledge beyond the use of the common general knowledge, to the extent necessary, to construe the specification. As a result of the Rokt patent application outlining that "any form" of suitable server computer using "typical" web server hardware was required to implement the invention, the Full Court again did not appear to have needed expert evidence to determine that no invention lay in the implementation of the scheme into a computer system.

The Full Court's comments in this decision with regard to the limited use of expert evidence, particularly in relation to the assessment of patent eligibility, is likely to affect litigation procedure in Australia. For example, depending on the facts of a specific matter, parties involved in disputes relating to computer implemented methods may not need to file expert evidence specifically for the purposes of addressing patent eligibility. Also, given that the Full Court went to some length to explain that the role of expert evidence in construing the patent specification and the claims should be limited and not include consideration of the common general knowledge "beyond the use of the common general knowledge, to the extent necessary, to construe the specification", the decision may affect Patent Office examination procedure for manner of manufacture. The Full Court did not refer to the use of prior art more generally to assess the 'contribution' to the art, as is the Patent Office's current examination practice. Such an update to Patent Office's examination procedure would be welcomed by many Australian patent attorneys operating in the ICT space, who believe that the current examination practice conflates the ground of 'manner of manufacture' with those of novelty and inventive step.

The substance of the invention

The Full Court concluded that even if a scheme is new and ingenious, it is not made patentable merely because it can or must be implemented using computer technology.

The Full Court stated that the task of construing the specification involves arriving at a characterisation of the invention claimed in order to determine whether or not it is in substance for a manner of manufacture. That involves the application of the common law principles developed to separate patentable inventions from schemes or methods of business. As the Full Court explains was the case in Research Affiliates, RPL Central and Encompass, the latter can, in the context of computer implementation, be dressed in the clothes of invention and a case of the Emperor’s new clothes.

Rokt submitted that the primary judge made a finding of fact with regard to the substance of invention that the Full Court was precluded from revisiting. The Full Court rejected this submission, stating again that the correct characterisation of the invention is a matter of law, based on the construction of the specification that may, where appropriate, be assisted by the evidence of experts. The Full Court was able to rely on a consideration of the specification as a whole in determining that the substance of the invention was to a scheme to induce consumers to respond more favourably to advertising content displayed to a consumer on a screen. For example, the specification made it clear that, the "engagement offer" differs from traditional digital advertisements in that its primary function is not to sell a particular product or service, but instead is a mechanism for encouraging the consumer to initially engage with the advertisement system in a positive sense. Having determined that the substance of the invention was a scheme, the Full Court then needed to ascertain whether the scheme had simply been put into effect using computer technology.

The use of generic computer technology

Having determined that the invention was a marketing scheme, the Full Court turned to the question of whether it can broadly be described as an improvement in computer technology. The Full Court considered whether the computer system was a mere tool in which the scheme was performed or did invention lie in the computerisation of the scheme.

The Full Court concluded that nothing about the way that the specification described the computer hardware or software indicated that either is any more than a vehicle for implementing the scheme, using computers for their ordinary purposes. Interestingly, the Full Court further commented that the level of abstraction in the claim language at which the marketing scheme was defined did not assist Rokt. Rather, it demonstrated that the claimed invention did no more than provide a list of steps to be implemented using computer technology for its well-known and understood functions, and that the specification provided no suggestion to the alternative.

Convergence with US and European practice

The Full Court decision in Rokt has continued the recent convergence of Australian patent practice regarding manner of manufacture with European and US practice regarding patent eligibility for computer implemented inventions, and also provides useful guidance for businesses developing and filing patents for software.

In short, to meet the threshold of patent eligibility in Europe, a computer implemented method must create a 'technical effect'. In order to determine whether a claimed computer implemented method creates a technical effect, the application of the claimed method is considered (i.e. is the application for a 'technical purpose'), along with whether the method is adapted for a specific 'technical implementation'. To assist to ensure that a claimed invention meets the patent eligibility threshold in requirement in Europe, it is important that, if present, patent applications in the ICT field describe the technical purpose of the application and include it in the claims where possible. If the application is not for a specific technical purpose, patent applicants should consider including much narrower claims that specifically target a technical use of commercial relevance (e.g. image recognition or another recognised technical application) to increase the prospect of meeting the patent eligibility requirements in Europe.

In the US, the two-step 'Alice' test is implemented when considering the patent eligibility of computer implemented methods. Firstly, the claimed invention is assessed to determine whether it is directed to a judicial exception (e.g. an abstract idea). Secondly, as is commonly the case with computer implemented methods, the claimed invention is then assessed to determine whether it is directed towards significantly more than the judicial exception (i.e. what is the underlying inventive concept). Similar considerations to those described above for Europe are recommended when businesses decide whether to file a patent application in the US for a computer implemented method and what to include in that patent application. It is very useful for patent applicants in the US to state the technical effect and technical advantages over the prior art in the patent application and, where applicable, claim those advantages to increase the prospect of meeting the threshold in the US for patent eligibility.

The Rokt specification worked against it in many respects, as the Full Court was able to determine the state of the art, the business problem, and the generic implementation of the scheme into a computer from the specification itself. This provides useful drafting and patentable subject matter evaluation guidance for attorneys and businesses operating in the ICT field that will also assist with the prosecution of related applications in Europe and the US. For example, if it is determined that a computer implemented method provides a technical solution to a technical problem, or if invention lies in the computerisation of a scheme, it is critical to explain this adequately in the specification and not to water down potentially patentable aspects of the disclosure. Also, if it is determined before filing that a proposed invention is most likely a business method, it is important that businesses are encouraged to carefully track the computerisation of the method, as technical problems may be overcome during this process that could then form the basis of the patent application in Australia, Europe and the US. 

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