… But a ‘Silver Lining’ on Patent Office Practice?
The Full Court of the Federal Court of Australia handed down its decision today in the appeal of the Commissioner of Patents v. Rokt Pte Ltd [2020] FCAFC 86. In doing so, the Full Court of the Federal Court overturned the decision of a single judge of the Federal Court and ruled that the subject-matter of the respondent’s patent application was not a “manner of manufacture” within the meaning of s.18(1)(a) of the Patents Act 1990.
The invention claimed concerned a computer implemented method for linking a computer user to an advertising message by way of an intermediate engagement offer which is operable to drive a higher level of engagement with the advertising message than if the advertising message was presented without the offer. Although the Full Federal Court acknowledged that the method created a “mechanism for … the consumer to engage with an advertisement system in a positive sense” [93], and acknowledged that this was not a method that could be implemented outside of the computer architecture or environment claimed, it nevertheless held that the invention claimed merely “amounts to an instruction to carry out a marketing scheme” and that “the broad statements of steps … in claim 1 do no more than locate the scheme in computer technology, using its well-known and understood functions” [115]. This conclusion not only appears to ignore the physical interaction that method claimed generates with a computer user, it also applies a reasoning that appears to be irreconcilable with earlier decisions of the Full Federal Court in which computer-implemented methods were held to be patentable.
A possible ‘silver lining’ in the decision concerns the Full Federal Court’s interpretation of the statement by the High Court of Australia in D’Arcy v Myriad Genetics Inc [2015] HCA 35 at [12]. The Full Federal Court noted in today’s decision at [68] that the appropriate enquiry in that passage involves the construction of claim 1 read in the light of the specification as a whole in the light of “the relevant prior art”, being the common general knowledge. This is distinct from the current practice of the Australian Patent Office (APO), which is to refer more-or-less to any prior art documents in construing a claim when assessing manner of manufacture. Thus, this new decision of the Full Federal Court would at least appear to provide basis for moderating the current practice of the APO in this area.
This is the fourth decision of the Full Federal Court against the patentability of a computer-implemented invention in the last few years and it promises to complicate an already difficult area of Australian law. Importantly, however, a further appeal to the High Court of Australia is still possible in this case. The High Court of Australia has not yet specifically considered the patentability of a computer-implemented invention and could offer much needed clarity. We shall watch with interest whether the Applicant applies for leave to appeal to the High Court of Australia in this case.
Our full review of the decision Commissioner of Patents v. Rokt Pte Ltd [2020] FCAFC 86 by the Full Court of the Federal Court will follow shortly.