Tough day for Rokt – but further clarification for software patents

In a unanimous decision, the Full Federal Court overturned the decision of the primary judge and found that Rokt’s innovative technology directed to a digital advertising system and method was not patent eligible subject matter. In arriving at that decision, the Full Court found that the claimed invention amounted to instructions for carrying out a marketing scheme implemented using well-known and understood functions of computer-technology.

Whilst this is a tough day for Rokt, who will be disappointed given the technological aspects of their invention, there are nevertheless some silver linings that emerge from the Full Court’s decision. In particular, the Full Court issued a strong statement that consideration of “well-known and understood functions” of computers 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.

The Full Court has thus clarified in unequivocal terms that using the common general knowledge (or, by extension, referencing the state of the art) when assessing patent eligible subject matter is limited to construing the specification.

This is consistent with the decision in Repipe, where McKerracher J, in discussing “Relevant Principles”, stated “The approach is not to compare the claim against the common general knowledge in the field of computer technology or against prior art in that field”.

It is therefore clear that common general knowledge should not be used in relation to assessing patent eligible subject matter, beyond construing the specification, and certainly not in assessing any ingenuity or inventive merit to determine the substance of the invention.

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