A computer related invention is patentable

Robertson J has allowed Rokt’s appeal and held that its ‘computer implemented method for linking a computer to an advertising message by way of an intermediate engagement offer ….” was a manner of manufacture and so patentable subject matter.

The Commissioner had found (and here) that Rokt’s patent was not a manner of manufacture as required by s 18(1)(a) and so refused grant.

On the appeal, Robertson J found Rokt’s claims were patentable subject matter in application fo the principles from Research Affiliats and RPL Central on the facts.

Crucial to his Honour’s decision was evidence that computer systems at the priority date in December 2012 did not work in the way claimed, which was not just a routine use of the technology.

In response to the Commissioner’s argument that the method was just a business method, Robertson J said at [205]:

The invention solved not only a business problem but also a technical problem. As to the latter, it provided a single platform in which user engagement data could be coupled with transactional data and user context data to provide a personalised ranking of engagement offers to the user. This technical problem of providing this single platform was solved by introducing the tracking database and the objects database and designing the ranking engine and the engagement engine which accessed and manipulated the data in the two databases to rank and select engagement offers. The ranking engine optimised the personalised output for the consumer.  Critically, the ranking engine implemented a ranking algorithm which ranked the retrieved object by a combination of an engagement score and revenue score. I also accept the evidence Professor Verspoor gave, which is summarised at [46]-[54], [104]-[107], [134]-[135] and [145] above.

On the evidence, Robertson J found that known, exiting components were integrated into a new system in an innovative and previously unknown way. At [213], his Honour explained:

Taken in isolation, a database, a client-server architecture, the running of the Javascript program on a publisher’s website and the creation of a ranking engine to rank abstract data to achieve an ordered list were each known as at December 2012 but, in combination, the distinction between engagement offers and general advertising, coupled with the algorithms making use of background data for personalisation and ranking was a new combination of new and previously existing components and a new use of computer technology.

In this case, the evidence showed that the use of computers was integral to the invention, not just incidental. At [208] – [210], Robertson J said:

The use of computers was integral, rather than incidental, to the invention in the sense that there is an invention in the way in which the computer carries out the business scheme: see RPL Central at [107]. It was not feasible to store and manage large amounts of tracking data collected from real-time interactions with digital devices and manipulate large quantities of data for context-sensitive decision-making without the use of computers. The data bank that was the source of engagement objects and historical/tracking data was a critical component of the invention. I accept the applicant’s submission that the computer was not merely acting as an “intermediary” but that the substance of the invention involved the new functioning given to the computer. I accept Professor Verspoor’s evidence summarised at [55]-[57] above.
Storage and manipulation of data at the magnitude and speed that was required to implement the method could only be done on a computer or computers. The data analysis claimed in the patent could not be performed without a computer or computers, particularly having regard to the gathering, manipulation and subsequent use of the data by the engagement engine.
The user interactions took place on the user’s computer and it was integral to the invention that data be collected, and engagement offers presented, through that computer. The transmission and receipt of data over the internet to and from the advertising system could also only be done using computers.

Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988

Hague consultations – outcome

IP Australia has published a report on the results of its consultations on the economic consequences of Australia joining The Hague Agreement for the international registration of industrial designs.

In short, there’s a bit of minor tweaking, but the outcome is pretty much the same. The revised best estimate:

  • net benefit to Australian designers is $3 million (up from $1.7 million)
  • net cost to Australian consumers is $39.7 million (down from $58 million)
  • net cost to Australian IP professionals is $2.5 million (unchanged)
  • net cost to the Australian Government is $2.8 million (unchanged).

Perhaps one of the most interesting aspects of the report is an analysis of all infringement court cases involving patents, trade marks or registered designs since 2008:

Rate of infringement cases by registered IPR

There have been far less design infringement cases but, having regard to the number of registered designs, litigation is in approximately the same proportion as trade mark infringement cases,[1] but approximately only one third the rate of patent litigation.

Another surprising aspect: the New Zealand Intellectual Property Association also made submissions – which appear to have been rather influential – which strongly opposed Australia joining the Hague system.

Finally, the report is at pains to say that the costs benefit analysis of joining Hague is only one factor being considered. Anyone want to put money on Australia joining (before we sign up to anothere one-way trade agreement with, this time, the EU)?


  1. The report gets a bit over-excited by the high proportion of certified designs which get litigated – well, duh!  ?