ROKT decision breathes new life into software patents

On 12 December 2018, the Federal Court of Australia handed down its decision in Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988. In his judgment, Justice Robertson found that the claimed invention, directed to “A computer implemented method for linking a computer user to an advertising message by way of an intermediate engagement offer”, was patent eligible subject matter, thus overturning the decision of the Delegate of the Commissioner of Patents to refuse grant of a patent on the application.

When considering whether a claimed invention is patent eligible subject matter, the correct question is, as put by the High Court in NRDC:

"Is this a proper subject of letters patent according to the principles which have been developed for the application of s 6 of the Statute of Monopolies?"

As noted by the High Court in Myriad, with reference to Mirabella and Ramset, assessment of patent eligible subject matter is to be separate from considerations of novelty and inventive step. Further, any assessment of whether an invention involves a sufficient “quality of inventiveness” in order to be patent eligible subject matter is to be performed on the face of the specification and without regard to the prior art base.

In Rokt, Justice Robertson was critical of the approach of the Commissioner of Patents, which is commonly adopted by Australian patent examiners, of focussing on, and eliminating from consideration, any individual elements that are considered to be known:

A focus on elements known as at December 2012 in isolation tends to lose sight of the combination of techniques or components in an innovative and previously unknown way.

Further, Justice Robertson found that the claimed invention had translated a business problem of attracting the attention of the user and having the user choose to interact with the advertiser into the technical problem of how to utilise computer technology to address the business problem.  Justice Robertson found that the use of computers was integral to the invention and that the defined set of features resulted in an improvement to computer technology in the form of a dynamic, context-based advertising system.

The Rokt decision is welcome news for patent applicants and patentees of computer‑implemented inventions in Australia. However, the Commissioner of Patents has appealed the decision and we will keep you informed of developments as they arise.