recently, Australian technology company in the spotlight Rokt Pte Ltd (Hereinafter referred to as Rokt) V. Commissioner of Patents ([2018] FCA 1988) Finally came the court's verdict. The Panel of the Federal Court of Australia ruled Rokt is "A marketing program" , And determine that the invention is not a patentable object.

The Federal Court panel in Commissioner of Patents v Rokt counterclaim ([2020] FCAFC 86) Reversed the trial judge's ruling, And determine Rokt Is not "Manufacturing method" , It is therefore not a patentable object.

The case involves Rokt One of the patent applications, Is called "Digital advertising systems and methods" Application program of, Relating to computer implementation systems and methods. When a user visits a website, The system and method are provided by "Participating offer" Link users to online ads. Participation offers provide a contextual advertising system based on a user's previous interactions, The system shows specific offers to users who are more likely to interact with ads, Compared to traditional digital advertising methods, The new system increases user engagement.

2017 years, The Commissioner of Patents represented at the hearing on the basis that the application was not "Manufacturing method" Held that it was not patentable, rejected Rokt Application for. 2018 years, Rokt Successfully appealed the outcome of the hearing decision to the federal court, The court held that the invention in question pointed to patentable objects.

thereafter, The Commissioner of Patents challenged the ruling, And appealed to the Federal Court Panel. The ruling was in full compliance with the federal court panel 2019 Released at the end of the year about Encompass Corporation Pty Ltd v Info Track Pty Ltd ([2019] FCAFC 161) The guiding principles for evaluating patentable objects in the decision of the case, Focus on the content and details disclosed in the patent description to assess whether the invention is a scheme, And consider the implementation of the scheme in the computer.

Overturning the trial judge's decision

finally, Judge Reles (Rares) , Nicholas (Nicholas) hoberle．Jay (Burley JJ) Identified the trial judge's error in the initial decision, Because he was too dependent Rokt Vesper the technologist (Verspoor) opinion, And adopted her answer to the question that determined the nature of the invention. In addition, It was also found that the trial judge relied on the technical problems and solutions identified in the specification, But it does not consider whether the technical solution advocates protection. The collegial bench found, The junior judge did not offer any analysis of the core issues, The central question is whether the invention is already being implemented, Or just will "scheme 'input' Computer technology" Method of.

The judge highlighted the risks of adopting expert advice without further legal analysis, It also points out the importance of using legal methods to understand inventions when evaluating manufacturing methods. The decision on universal software says, Common sense applies only to explanatory instructions, But not for use "General purpose software" Or computer evidence.

contrary, The judge argued that these terms were only essential for possessing, A reference to a computer with typical or well-known functions, Not common sense in the field. According to Encompass Decision of case, The judges considered it Rokt Whether the method of protection claimed is implemented using common software. The full court is present Encompass The case states that, The claims specification for the invention does not define any specific programming software to implement the invention. According to this interpretation, The problem that competing inventions solve is how to increase consumer engagement.

Therefore, The solution was identified as presenting an intermediary to users interacting with digital content "Participating offer" . Regarding the marketing program according to these reasons, Competing inventions are classified as "Marketing program" . In assessing the object of patentability, This raises an important question——The computer is merely a tool for executing inventions, Or invented the realization of computer.

According to Encompass The method proposed in the case, The judge reached strikingly similar conclusions about the details in the specification: "From our point of view, The way the specification describes the computer hardware or software does not suggest that either is more than a tool for executing the scheme. "

"This specification describes the hardware architecture in the most general sense. "

"... No different conclusion can be drawn from the information provided in the instructions. Although the text is long and detailed, But in addition to referring to the most general applications of computer technology used in network environments, It does not characterize the invention. "

Although it is certain that the specification represents a solution to a marketing problem, But because of the lack of specific instructions, So the way to implement the solution does not involve the use of computer technology, "That is, the instruments for implementing the programme are not involved" . In relation to Encompass When a direct comparison is made, The judges concluded, Rokt The invention required to be protected is equivalent to the method of executing the marketing scheme, And the invention provides only a list of steps that can be used to perform well-known functions using computer technology.

The decision brings the ruling in this case in line with recent rulings on patentable objects, And presents the applicant with a very difficult challenge, And that is how do you make sure that the concept of invention is an idea, It's still practical. Rokt Must be in 6 month 18 To appeal against the ruling.

(Compiled from www. lexology. com)

Reprinted from China Intellectual Property Network   translation: Wang Dan　proofread: Rason group

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