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Rokt Pte Ltd

Case [2016] APO 66 11 October 2016

Patentability

Manner of Manufacture

Business Method

Admissibility of Evidence

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Rokt Pte Ltd [2016] APO 66

Patent Application: 2013201494

Title:A digital advertising system and method

Patent Applicant:                   Rokt Pte Ltd
Delegate:  Dr N.R. Madsen
Decision Date:  11 October 2016
Hearing Date:  2 August 2016, in Canberra

Catchwords: PATENTS – examiner objection during re-examination – manner of manufacture – online advertising – substance of the invention is in the field of digital (internet) advertising being inserting of an engagement offer before advertisements, whereby advertisements are only provided to a user if the user accepts the engagement offer, there being no direct advertising benefit to the subsequent advertisers of the selected advertisements other than encouraging positive engagement by the user with the advertising system – invention is not a manner of manufacture – opportunity to amend and file submissions before a final determination

Representation: Dr Ben Kremer of counsel instructed by Mark O’Mally of Adams Pluck Patent & Trade Mark Attorneys.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013201494

Titles:A digital advertising system and method

Patent Applicant: Rokt Pte Ltd
Date of Decision: 11 October 2016
DECISION
The sole outstanding objection to the application is that the claimed invention is not for a manner of manufacture. I agree with the examiner of the re-examination reports that there is no patentable subject matter claimed.
Absent any relevant submissions, at this point I do not see any particular subject matter in the entirety of the specification that could confer patentability upon the claims if amended. However as the applicant requested the opportunity to file amendments in the attempt to overcome a finding of lack of manner of manufacture in the claims I will provide such an opportunity.
As such, the applicant is provided one (1) month from the date of this decision to file amendments and supporting submissions after which time a final determination will be made. Absent any amendments and subject to appeal, I will proceed to refuse the application.
REASONS FOR DECISION
Background

Patent application number 2013201494 was filed by Rocklive Pte Ltd on 13 March 2013. The application claims priority from Australian provisional applications 2013900836 and 2012905431 and thereby has an earliest claimed priority date of 12 December 2012. The applicant later changed their name to Rokt Pte Ltd.
The applicant requested examination on 13 March 2013. The application was accepted on 13 June 2013 and subsequently opposed. Evidence in support in relation to grounds of novelty and inventive step was filed, however the applicant did not file any evidence in answer. Hearing dates were requested by a delegate of the Commissioner of Patents however before a hearing could be set the opponent withdrew their opposition on 1 April 2015. Following withdrawal of opposition, a delegate of the Commissioner considered re-examination was warranted and issued a first re-examination report on 30 April 2015. In total, five adverse re-examination findings have issued to date with the final examination report, dated 7 April 2016, maintaining the objection that the claims are not for a manner of manufacture. The…

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 [2016] APO 66
Case: [2016] APO 66
Decision Date: 11 October 2016

CaseChat Overview and Summary

Rokt Pte Ltd sought to patent a method for increasing the likelihood of an online user engaging with an advertisement. The invention involved presenting an "engagement offer" to a user, which was unrelated to the subsequent advertisement. If the user positively engaged with the engagement offer, the advertisement would be presented. The applicant argued that the invention was patentable as it involved a process that increased user engagement with advertising material. The Australian Patent Office disagreed and objected to the patent application on the basis that the invention lacked a "manner of manufacture". The applicant was given an opportunity to amend the claims and make further submissions before a final decision was made. The court found that the invention lacked a "manner of manufacture" as the substance of the invention was in the field of advertising and not in a technical or practical art. The invention did not involve a physical or tangible product but instead involved a scheme for advertising to a customer such that they were more inclined to positively interact with advertisements. The invention was therefore not patentable subject matter.

Orders