Google LLC - [2018] APO 13

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Google LLC [2018] APO 13

Patent Application: 2014381712

Title:Advertisement Price Discounting

Patent Applicant:  Google LLC
Delegate:  M. G. Kraefft
Decision Date:  21 February 2018
Hearing Date:  Written submissions filed on 21 December 2017

Catchwords: PATENTS – examiner’s objection – whether invention is a manner of manufacture – auctioning advertisement spots – bidding based on cost per user action – discounting cost to auction winner to price based on bid of second-placed bidder – problem of attributing user action to any of multiple advertisement spots – discounting costs to advertisement purchaser for advertisement spots to a level encompassing all advertisement spot purchases – application not for manner of manufacture – no patentable subject matter – application refused.

Representation: Patent attorney for the applicant: Pizzeys.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014381712

Title:Advertisement Price Discounting

Patent Applicant: Google LLC
Date of Decision: 21 February 2018
DECISION
The present application is not for a manner of manufacture. Thus, the application is not directed to patentable subject matter.
The application is refused.
REASONS FOR DECISION
BACKGROUND

Google Inc filed patent application 2014381712 on 7 February 2014 as an international application under the Patent Cooperation Treaty (“PCT”). The international application is designated PCT/US2014/015429. The earliest priority date is 7 February 2014.
Application 2014381712 has been subjected to three examination reports. The remaining objection, consistently raised in all reports, is that the claims do not define a manner of manufacture. Following the first report, the applicant filed a statement of proposed amendments under Section 104 to address the objections raised in that report. Nonetheless the examiner has remained unpersuaded in respect to manner of manufacture. There has been no further proposed Section 104 amendment from the applicant.
After the third report, the applicant requested to be heard. The hearing was conducted by way of written submissions.
On 24 October 2017, Google Inc requested an amendment of the record of the owner’s name. The application is presently proceeding in the name of Google LLC (“the applicant”).
While the final date for acceptance of the application was 3 January 2018, patent sub-regulation 13.4(1)(g) may be available to extend the time for gaining acceptance to 3 months from the date of the present decision.
SPECIFICATION
The specification states that the present disclosure relates generally to advertisement pricing. More particularly, the disclosure relates to discounting costs for conversions to advertisement purchasers based on a level at which the advertisement purchasers would have received the same advertising distribution results associated with the conversions.
Many actions of users following exposure to an advertisement may qualify as conversions. Paragraph [0015] of the specification provides examples. Actions may be fulfilled by a purchase at a merchant location, a purchase at an online store, a physical appearance at a merchant location, a completion of a survey, or any other suitable action.
As background, the specification describes conventional systems where online and other advertisement distributors use second-price discounting to advertisement purchasers. An advertisement distribution system conducts auctions based on bids…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Google LLC [2018] APO 13
Case: [2018] APO 13
Decision Date: 21 February 2018

CaseChat Overview and Summary

In this case, Google LLC, the patent applicant, filed a patent application related to advertisement pricing. The invention aimed to discount costs for conversions to advertisement purchasers based on a level at which the purchasers would have received the same advertising distribution results associated with the conversions. The dispute centred on whether the invention constituted a "manner of manufacture" and was thus patentable subject matter. The case was heard by the Australian Patent Office, with written submissions filed on 21 December 2017, and a decision made on 21 February 2018. The applicant argued that the invention was technical in nature, as it addressed the problem of attributing user actions to multiple advertisement spots, and involved a system discounting costs to the advertisement purchaser based on all advertisement spot purchases. However, the court found that the invention did not constitute a manner of manufacture and was not directed to patentable subject matter. The court reasoned that the problem addressed by the invention was a business problem, rather than a technical one, and the solution involved a non-technical approach of discounting costs based on all advertisement spot purchases. Therefore, the application was refused.

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