Rokt: Greater Clarity for Australia on Computer-Implemented Inventions

In its decision in Commissioner of Patents v Rokt Pte Ltd, a Full Bench of the Federal Court of Australia has delivered some sorely needed guidance on the patentability of computer-implemented inventions under Australian law.

Key points:

Dressing up a computer-implemented invention for a business method or system in the guise of a technical solution to a problem will not suffice – the invention as claimed must in substance be a manner of manufacture.
For an invention relating to a business scheme to be patent-eligible, it must be possible to broadly described the invention as claimed as an improvement in computer technology (i.e., the invention lies in the computerisation, rather than the computer being a mere tool).
Although broad claims are highly desirable in terms of preventing infringement by various technical means, general or abstract claims which are not limited to particular means of technical implementation risk being found to be no more than instructions to carry out a scheme.
The Court has clarified that expert evidence, common general knowledge and prior art have only a limited role to play in the assessment of manner of manufacture.
In light of the lack of New Zealand court decisions on the patent eligibility of computer-implemented inventions under the current Act, this judgment is likely to be influential in New Zealand.

The decision

In a unanimous and clearly expressed judgment, the Court overturned the primary judge’s decision that Rokt Pte Ltd’s claimed method and system for digital advertising constituted patentable subject matter, finding that claim 1 merely amounts to an instruction to carry out a marketing scheme.

In the Court’s view, the level of abstraction at which claim 1 is expressed demonstrates that it does no more than provide a list of steps to be implemented using computer technology for its well-known and understood functions. There was nothing in the specification to suggest otherwise.

The reasons for that conclusion are set out clearly in the judgment and will be useful guidance for those applying for patent protection for computer-implemented inventions in the future, or for those assessing the strength of such claims.

The Court emphasised that it is the invention so far as claimed in any claim that must be characterised in order to determine whether the invention claimed is in substance a manner of manufacture. As the Court put it, claims for computer-implemented inventions may be no more than business schemes which appear to be cloaked in invention but, on closer inspection, prove to be a case of the Emperor’s new clothes.

As we previously reported, contrary to anticipation, the Full Court’s decision in Encompass did not deliver much clarity on the patentability of computer-implemented inventions generally. The Full Court’s analysis in Rokt of the Full Bench decision in Encompass is therefore a welcome bonus.

For future cases, the most significant aspect of the appeal judgment in Rokt is perhaps the clear explanation of the confined role that the common general knowledge, prior art and expert evidence have to play in assessing whether there is a patentable invention.

The High Court of Australia has previously emphasised that the grounds of novelty, inventive step and manner of manufacture are conceptually distinct grounds, and that manner of manufacture is assessed on the face of the specification alone. Nonetheless, there appears to have been a blurring of the grounds of invalidity in some Australian Patent Office decisions and, to a lesser extent, some court decisions. In Encompass, the Full Court accepted that the trial judge might have impermissibly intermingled considerations of manner of manufacture and those of other, conceptually distinct, elements of patentability, but nonetheless found no error in the primary judge’s conclusion.

The large volume of expert evidence filed on behalf of Rokt Pte Ltd, and the use made by Robertson J of that evidence, was crucial to the outcome of the Rokt case at first instance, and the increasing role of expert evidence in such cases has been a matter of some concern amongst practitioners and commentators.

The Full Court has clarified that:

It is fundamentally a matter for the Court to determine and characterise the invention having regard to the accepted principles of construction, not a matter of fact to be determined by expert evidence.
The role of expert evidence in construing the patent specification and the claims is limited to placing the Court in the position of the person acquainted with the surrounding circumstances as to the state of the art and manufacture as at the priority date.
The reference in past cases to “generic software” or using the computer for its “well-known and understood functions” involved consideration of computers having regard to their basic and well-known functions. This did 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.

Implications for New Zealand

We have previously discussed the New Zealand provisions relating to computer-implemented inventions and the manner in which the courts might interpret those provisions.^[i] In summary, inventions involving computer programmes must pass an initial hurdle under s.11 of the Patents Act 2013 (the NZ Act). Under that section, claims relating to a computer program “as such” are excluded from the definition of “invention”. If an invention which involves a computer program gets over the hurdle of s. 11, the invention must still be found to be a “patentable invention” within the meaning of s.14 because, among the other requirements for patentability, it is a manner of manufacture.

The requirement in s.11 of the NZ Act to consider the “actual contribution” arguably invites a comparison between the claims and the prior art which has the potential to blur the boundaries between patent eligibility and inventive step. The NZ Patent Examination Manual states that in determining the contribution, the examiner does not have to accept what the applicant says the contribution is, and is entitled to determine whether the alleged contribution (as the examiner has defined it) is known or obvious, typically by performing a search. However, the examiner is not required to conduct a formal search. The Manual also states that the examiner’s knowledge of the prior art will play a role in identifying the contribution.

As to whether the requirement to consider the “actual contribution” does necessitate or permit a comparison between the claims and the prior art, and a blurring of s.11 considerations with those of novelty and inventive step, that is not necessarily the case. The Full Court’s reasoning in Rokt may be influential in determining this issue.

In assessing whether the claimed invention is a manner of manufacture under s.14(a), it seems likely that a NZ court would approach the question based on NRDC, which was previously applied in decisions under the precursor to the 2013 NZ Act. A NZ court might well follow the Full Court’s judgment in Rokt, including as to the limited role of expert evidence, common general knowledge and prior art in the assessment of manner of manufacture. However, for the now, the approach of the NZ courts to computer-implemented inventions under s.11 and s.14(a) remains a matter of speculation.

[i] For a more detailed discussion, see A. Mayer, “Manner of Manufacture – Increasing Trans-Tasman Harmony or Difference?”, Intellectual Property Forum, Issue 119, March 2020, pp. 19-28.