Rokt Pte Ltd - [2017] APO 34

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Rokt Pte Ltd [2017] APO 34

Patent Application: 2013201494

Title:A digital advertising system and method

Patent Applicant:  Rokt Pte Ltd
Delegate:  Dr N.R. Madsen
Decision Date:  11 July 2017
Hearing Date:  Written Submissions filed 11 November 2016 and 20 June 2017

Catchwords: PATENTS – amendments made following adverse finding of hearing officer – examiner objection during re-examination – manner of manufacture – online advertising – substance of the invention is in the field of digital (internet) advertising being directed towards a scheme – application refused

Representation: Counsel for the applicant: Dr Ben Kremer

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013201494

Title:A digital advertising system and method

Patent Applicant: Rokt Pte Ltd
Date of Decision: 11 July 2017
DECISION
Amendments and submissions made do not overcome my finding in the original decision of Rokt Pte Ltd [2016] APO 66 that the claims are directed to non-patentable subject matter. Furthermore, I do not consider that the application contains any patentable subject matter. I refuse the application.
REASONS FOR DECISION
Background

This matter relates to a final determination in respect of patent application number 2013201494, filed by Rocklive Pte Ltd (subsequently Rokt Pte Ltd) on 13 March 2013. On 11 October 2016, I decided the matter of an outstanding manner of manufacture objection that was the result of re-examination after acceptance of the application (Rokt Pte Ltd [2016] APO 66, the original decision). In that decision I found that none of the claims before me were directed to patentable subject matter in that each claim was not for a manner of manufacture. While expressing that I did not see at hand any patentable subject matter in the specification absent specific submissions, I invited the applicant to file amendments and present submissions with respect to those amendments.
The applicant took that opportunity to amend and file submissions dated 11 November 2016. A further re-examination report was issued. In that report, the examiner found that:
“The proposed amendments provide further details of the scheme that was held previously to be the substance of the invention (e.g. selecting engagement offers based on standard criteria such as maximising revenue or engagement rates). Nothing in those further details involves any improvement to, or ingenuity in the use of, the functions of the computer and it follows that the claims as proposed to be amended are not directed to a manner of manufacture.”
Also in that re-examination report, a period of two months was provided for the applicant to file any further submissions. It was noted that following that period, a final determination would issue. On 20 June 2017 the applicant filed further submissions.
Reference is made to the original decision for background regarding the application in question. In this regard I make specific reference to the description of the invention contained in that decision at [5]-[17], and summary of the relevant law at [23]-[27]. This material is equally relevant to the present decision.
The amendment
The applicant sought to…

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: Rokt Pte Ltd [2017] APO 34
Case: [2017] APO 34
Decision Date: 11 July 2017

CaseChat Overview and Summary

Rokt Pte Ltd sought to patent a digital advertising system and method involving the use of engagement offers to increase user interaction with advertisements. The Australian Patent Office (IPO) had previously raised objections that the invention did not relate to a manner of manufacture and was not patentable subject matter. After Rokt made amendments and filed submissions, the delegate revisited the question of whether the amended claims were directed to patentable subject matter. The delegate found that the amendments did not alter the substance of the invention as being a scheme for improving customer engagement with digital advertisements through the use of engagement offers. The delegate concluded that the invention did not involve any ingenuity in the use of a computer and was therefore not directed to a manner of manufacture. The application was refused.

The key legal issue was whether the amended claims were directed to patentable subject matter under Australian patent law. The delegate found that the substance of the invention remained a scheme for advertising that involved inserting an engagement offer before advertisements to encourage positive user engagement. The delegate held that this type of advertising scheme did not amount to patentable subject matter as it did not involve a technical limitation or improvement. The amendments simply added more detail to the advertising methodology but did not change the nature of the invention as a business innovation rather than a technical innovation. As such, the invention did not meet the requirements for patentability under Australian law.

Orders