Rokt Pte Ltd
[2016] APO 66
•11 October 2016
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 applicant requested to be heard in regard to the objection in the final re-examination report and a hearing was conducted in Canberra on 2 August 2016.
Prior to 15 April 2013, the only grounds available for consideration during re-examination were novelty and inventive/innovative step. As a consequence of substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, expanded grounds (including manner of manufacture) are available for consideration during re-examination for re-examination reports issued on or after 15 April 2013.
The present matter relates to whether a particular online advertising method is a manner of manufacture, and considers the objection raised by the examiner in their re-examination report of 7 April 2016.
The specification
Before me for consideration are the description and drawings as accepted on 13 June 2013 and the proposed amendments to the claims filed 15 March 2016.
As discussed in the Background of the Invention, digital advertising can be generally classed as either “search-based” or “display-based”. Search-based advertising involves advertisements being presented to a user/consumer based upon keywords entered while performing on-line searching. Advertisers bid on particular keywords that they would like to appear alongside (e.g. alongside the results on the result page of a Google search). Display-based advertising differs in that it involves the presentation of images and/or animations while a user is consuming content in an online environment. Traditionally, advertisers target their ads in association with the particular content that a consumer may be viewing.
According to the description, while search and display methodologies are widely regarded as the most successful way of engaging with potential customers while they are browsing the internet, data shows that actual consumer engagement levels are still very low (often less than 0.1% of consumers actively follow up on a particular advertisement). It is clear that the presently described invention seeks to overcome this problem by providing an improved methodology and system for presenting advertising content.
The solution to this problem involves a number of steps in order to improve customer engagement with advertising material. Firstly, a computer program is delivered with a publisher’s content to a user’s device. This may for example, involve a program written in java script delivered with the information comprising a publisher’s website. The user’s device runs the program to gather information within the internet browser wherein that information relates to at least one of: an attribute of the publisher content (eg. a word on a webpage); an interaction with the publisher content by the device user (eg. a particular “click” on a webpage); and an attribute of the user (eg. their name or location).
Following the gathering of data, the computer program then evaluates the gathered data to determine an opportunity to insert an “engagement offer” into the publisher content at a contextually relevant time (e.g. by overlay upon the publisher’s webpage) for linking the user to an advertising message. The program also communicates the data to a remote advertising system. Here the remote advertising system also evaluates the data to select an engagement offer. The selected engagement offer is then inserted into the publisher content by the program.
Following the display of the engagement offer, the program then determines whether the engagement offer is accepted by the user (e.g. by positively clicking on the offer). If the offer is accepted, advertising messages are then selected and presented to the user (e.g. by overlay upon the publisher’s webpage). Figures 2 and 3 are helpful in depicting the described invention in that figure 2 demonstrates the key steps taken in the method, while figure 3 shows (according to the description at page 12 lines 9-11) “an example of a computing system 100 in which an embodiment of the invention may be implemented”.
Engagement offer as opposed to advertisements
As the applicant points out in their submissions “importantly, the engagement offer is not an advertisement”. They suggest that the engagement offer “is not intended to sell a particular product or service”. The description at page 9, line 11 to page 10 line 1 states:
“In this sense, the engagement offer 18 differs from traditional digital advertisements in that its primary function is not to sell a particular product or service, but instead is a mechanism for encouraging the consumer to initially engage with the advertisement system 10 in a positive sense.
A non-exhaustive list of the different types of engagement offers 18 that may be presented to a consumer according to embodiments described herein, include:
· coupons, discounts, vouchers, credits for goods/services
· simulated "scratch and win" games, potentially revealing a prize
· transaction relevant offers (e.g. chance to win back , or discounts, etc. on related transactions)
· surveys and polls (which typically display results)
· opportunities to participate in audience profiling or market research
· competitions
· sampling (products)
· video images and/or audio content
· free games
· access to exclusive/deeper/additional publisher content
· award points (e.g. loyalty points, frequent flyer points, etc.)
· cash back offers”
I further note that the invention is defined in the claims (see claim 1 below) whereby selection of an engagement offer is made such that there is no direct advertising benefit to the subsequent advertisers of the selected advertisements… other than encouraging positive engagement by the user with the advertising system prior to presentation of the advertising message (my emphasis). In this sense it appears that while (contrary to the applicant’s submission) an engagement offer may aim to sell a product or service via for example a coupon or discount, the engagement offer is to be construed such that it is an initial presentation of information to a potential customer before advertisements, which has no direct function of advertising in respect of the subsequent advertisements. Instead the engagement offer is designed as information which constitutes what may be referred to as a “doorway” to creating a positive disposition towards the receipt of advertising material. To me this could be as simple as a message that asks “Would you like to receive some great advertisements?”.
The description points out that extensive testing has found that the use of an engagement offer results in a more positive and deeper engagement with advertisements than traditional advertising methods (page 10 lines 10-20). This assertion is supported by evidence contained in a declaration filed by the applicant with their written summary of submissions prior to the hearing (declaration by Seth Bell dated 26 July 2016). At paragraphs [33]-[35], Mr Bell discusses the benefits of the described invention and notes that the invention results in an average conversion rate (rate of clicking on advertisements) of 8.8% compared with 0.17% for traditional forms of digital advertising. In this regard it can clearly be argued that the invention provides a positive effect of increased engagement.
In their written summary of submissions, the applicant succinctly summarises the invention:
“The essence of the invention is thus the creation of a new method of delivering online advertising: one that commences by inserting not an advertisement but a targeted engagement offer into the publisher’s content at an appropriate time: allows the user to interact with and, if they wish, accept the offer; and then – if and only if the offer is accepted – presents an advertisement.”
Embodiment of the described invention
In their written summary of submissions ([18]-[20]), the applicant outlines a particular embodiment of the described invention. Here, a publisher may be a company that sells movie tickets (e.g. Ticketmaster) and an engagement offer might appear integrated with the “Your tickets have been purchased and a confirmation email has been sent to [email protected]” message. The engagement offer could be for example “As a thank you for your purchase, please confirm your details for a chance to win $1000 to spend on Ticketmaster.com. Plus access exclusive offers from our sponsors”. In this example, the sponsors will be unrelated to Ticketmaster and will not derive direct advertising benefit from the offer to win the voucher. The program will then determine whether the engagement offer has been accepted. At this point the customer may be able to avoid the offer by selecting skip, ignore or close for example. If the user accepts then the program will cause advertisements to be displayed.
The description provides detail on the operation of the invention by means of “Engagement and Tracking Metrics” and “Engagement Journeys”.
As has been discussed above, a program (often referred to in the description and submission as a “widget script”) collects engagement data and determines when to insert an engagement offer. This data may be stored and used to generate metrics regarding the behaviour of users. An example may be the storing of product purchase histories, or different web pages visited by the user. This user specific data may then be used to tailor a particular set of advertisements to a particular user. If a user accepts an engagement offer they can then be taken on an engagement journey (e.g. a series of advertisements) specific to their personal interests.
The claims
The specification as proposed to be amended on 15 March 2016 contains 17 claims, two of which are independent. Claims 1 and 16 are directed towards a computer implemented method and advertising system respectively. It is sufficient at this stage to simply reproduce claim 1 for the purpose of analysis as the subject matter of claims 1 and 16 is essentially the same. Claim 1 reads as follows:
A computer implemented method for linking a computer user to an advertising message by way of an engagement offer which is operable to drive a higher level of engagement with the advertising message than if the advertising message was presented without the engagement offer, the method comprising:
providing computer program code to be delivered with publisher content to a computing device operated by the computer user and which computing device comprises an interface arranged to display the publisher content, the computer program code operable to be implemented by a processor of the computing device to perform the additional steps of:
gathering engagement data associated with the user, the engagement data derived from interactions made by the user with the interface and related to at least one of the following:
an attribute of the publisher content;
an interaction with the publisher content by the computer user; and
an attribute of the user;
evaluating the engagement data to determine an opportunity to insert an engagement offer into the publisher content for linking the computer user to the advertising message at a contextually relevant time;
communicating the engagement data to a remote advertising system implementing an engagement engine in real time, the engagement engine operable to further evaluate the engagement data for selecting a relevant engagement offer from a pool of different engagement offers stored by the remote advertising system;
causing the interface to insert the selected engagement offer into the publisher content for displaying to the computer user,
determining an acceptance of the engagement offer by the computer user; and
following the determined acceptance, presenting the advertising message comprising one or more advertisements selected from a pool of different advertisements on the interface, and whereby the selection of engagement offer is additionally made such that there is no direct advertising benefit to the subsequent advertisers of the selected advertisements through presentation of the selected engagement offer to the computer user other than encouraging positive engagement by the user with the advertising system prior to presentation of the advertising message.
The examiner’s objection
The objection in the final re-examination report essentially argues that the claims lack a manner of manufacture as they are directed to the presentation of information with there being no more than ordinary computer use. Here the examiner writes:
“The claims are directed to a presentation of information defined by the content being presented. Although the claims define the use of computers in giving effect to the presentation the use of the computer is no more than its ordinary use. The substance of the invention remains in the particular content presented to the user.”
The examiner also adds that the claimed subject matter does not lie in the “practical” arts.
“The response argues that the subject matter exclusion for presentations of information does not apply in this case because the invention provides a material advantage. The alleged advantage is in the form of greater engagement and better targeting. Any such advantage that arises from the invention as claimed lies only in the particular content provided to the user in the engagement offer and the advertising itself. The claim identifies no specific method of performing the targeting, only specifying the use of particular data as an input into the process. This particular data (e.g. user identification/demographic information) is well known in the art as a basis of targeting content. The improved effectiveness of the advertising therefore remains the result of the application of the fine arts, and not the practical.”
Further logic was provided by the examiner in the re-examination report however I see no reason to reproduce it here.
In my decision I will address the submissions made by the applicant at the hearing where these submissions were made with reference to the relevant case law.
The law
As was the case identified by the Deputy Commissioner in Amadeus s.a.s [2016] APO 56, the principles of law that apply to the present matter are substantially uncontroversial, being well summarised in the decision of delegate Dr Barker in Aristocrat Technologies Australia Pty Limited [2016] APO 49. There the delegate, at [35], sets out relevant considerations for patentability of inventions involving computer implementation arising from the Full Federal Court decisions of Commissioner of Patents v RPL Central Pty Ltd (2015) 328 ALR 458 (RPL Central); (2015) 115 IPR 461 and Research Affiliates LLC v Commissioner of Patents (2014) 227 FCR 378 (Research Affiliates):
“I conclude that it is relevant to consider a range of matters. Without seeking to be exhaustive, these include:
·there must be more than an abstract idea, mere scheme or mere intellectual information;
·is the contribution of the claimed invention technical in nature;
·does the invention solve a technical problem within the computer or outside the computer;
·does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
·does the application of the method produce a practical and useful result;
·can it be broadly described as an improvement in computer technology;
·does the method merely require generic computer implementation;
·is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
·is there ingenuity in the way in which the computer is utilised;
·does the invention involve steps that are foreign to the normal use of computers; and
·does the invention lie in the generation, presentation or arrangement of intellectual information.”
In addition to that identified by the delegate, RPL Central also discussed (at [100]), with reference to Research Affiliates, that:
“…there is a distinction between technological innovation which is patentable and business innovation which is not… although a business method may be the subject of letters patent.”
Also pertinent is that it is clear from both RPL Central and Research Affiliates, in addition to D'Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad), that the assessment as to whether a claimed invention is properly the subject of a patent (i.e. is a manner of manufacture) is one of substance over form. As per Myriad at [144]:
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
In addition to RPL Central and Research Affiliates the applicant turned to the decision of the Full Federal Court in CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (CCOM) in making their arguments pointing specifically to the following:
a) “The question is to be answered bearing in mind that the term "manufacture" has applications beyond limits suggested by its etymology, and that any attempt at precise definition of "manufacture" in s 6 is bound to fail.": CCOM at [289];
b) "…manner of manufacture, novelty, inventiveness and utility are stated as distinct requirements of a patentable invention. Thus, whilst a claim for the ball point pen now would fail for anticipation and obviousness, it would still be a claim for a manner of manufacture. Yet in the present case there are passages in the reasons of the primary judge (at 593) which suggest he was influenced in the determination of the issue as to "manner of manufacture" by asking whether what was claimed involved anything new and unconventional in computer use.": CCOM at [291].
c) "…insofar as “manufacture” suggests a “vendible product”, this is to be understood as covering every end produced or artificially created state of affairs which is of utility in practical affairs and whose significance thus is economic”: CCOM at [291];
d) …in Burroughs Corporation's Application [1974] RPC 147, followed by Burchett J in International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR 218 (IBM), "[l]t is not enough to take a narrow and confined look at the 'product' produced by a method. Of course, if a method is regarded purely as the conception of an idea, it can always be said that the product of such a method is merely intellectual information. If, however, in practice the method results in a new machine or process or an old machine giving a new and improved result, that fact should in our view be regarded as the 'product' or the result of using the method, and cannot be disregarded in considering whether the method is patentable or not.": CCOM at [293];
e) "The NRDC case at 275-277 requires a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour. In the present case, a relevant field of economic endeavour is the use of word processing to assemble text in Chinese language characters. The end result achieved is the retrieval of graphic representations of desired characters, for assembly of text. The mode or manner of obtaining this, which provides particular utility in achieving the end result, is the storage of data as to Chinese characters analysed by stroke- type categories, for search including 'flagging' (and 'unflagging') and selection by reference thereto.": CCOM at [295].
The applicant’s identification of the seminal manner of manufacture case law of “The NRDC case” constitutes reference to the following extract of National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 at [275].
"The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art ... that its value to the country is in the field of economic endeavour."
Consideration
The substance of the claims
A noted above at [14], the applicant clearly points out what they consider to be the “essence” of the invention being:
“… one that commences by inserting not an advertisement but a targeted engagement offer into the publisher’s content at an appropriate time: allows the user to interact with and, if they wish, accept the offer; and then – if and only if the offer is accepted – presents an advertisement.”
There are clearly a number of other steps involved in the claimed method of claim 1. The key step of the claimed method referred to by the applicant involves a program that is downloaded along with publisher content via, for example, an internet browser when a user visits a particular website. This program is run by the user device. On this basis the applicant argues that the computer is “integral to the claimed invention” as per Research Affiliates at [104] which cited Lourie J in Bancorp Services LLC v Sun Life Assurance Co of Canada (US) 687 F. 3d 1266 (2012):
“To salvage an otherwise patent-ineligible process… a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not.”
The applicant argues that “…only the program can cause the engagement offer to be made…” and that “…humans [could not] perform any of the functions fast enough to allow the engagement offers to be fetched, examined and shown…”.
From a reading of the specification, I see nothing to suggest that the alleged invention lies in the use of a program delivered from a publisher to a user which analyses data to determine when to insert content (be it advertising, an engagement offer or otherwise). The specification appears silent in regards to any necessary complexity in such a process. In this sense, the general description of the invention focuses upon the fact that instead of immediately receiving advertisements, an engagement offer is initially presented to the user. Figure 2 (provided above) is a helpful depiction of the “essence” of the invention in the form of a schematic diagram with steps involving generically: gathering data (S1), evaluating data (S1), presenting an engagement offer (S3) and upon acceptance of engagement offer presenting advertisements (S4). The system schematic of figure 3 simply appears to show a standard computer network arrangement suitable for delivering targeted advertising. In this sense I see no ingenuity lying in the arrangement of computer systems required to perform the method as exemplified in figure 3.
The examiner pointed out in their final re-examination report that the data gathering that is done by the program “is anticipated by the standard processes of having a script access a cookie that identifies a user and providing that to the advertising server to be used in targeting”. Responding to this the applicant submitted that “the invention might but does not necessarily use cookies”. To me the examiner correctly identifies standard practices used in targeted advertising. The fact that the applicant suggests that cookies may not be used suggests nothing more than the fact that cookies are one of a number of routine possibilities in the art that one may choose for data collection and analysis steps. This understanding of standard practices is reinforced by the evidence of Mr Seth Bell at [26]. Here the declarant makes it clear that traditional methods of display-based online advertising operate by accessing cookies using a program script.
“The ROKT Method is a new form of presenting advertising that is different from traditional cookie-based advertising, which relies on analysis of browsing history (which is stored as files on the user's computer), to determine what advertising content to show the user. Also, traditional online advertising inserts advertisements in a way that is intrusive and disruptive to a User using a Publisher's site, and in doing so has a disengaging effect on them.
Therefore I find that in accordance with the essence of the invention identified by the applicant, the substance of the invention appears to lie in the use of analysed data to insert 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. This subject matter is entirely consistent with that identified by the applicant as the “essence” of the invention.
So while the invention may only be able to be performed in a computer environment it is clear to me that the invention does not lie in any particular aspect of computer implementation. In this sense, there does not appear to be any ingenuity in the particular way in which the computer is utilised to perform data gathering and analysis (as per RPL Central and Research Affiliates). While the computer performs the claimed functions faster than a process performed manually, as claimed the computer and program do no more than this. The fact alone that the invention cannot be performed outside a computer, does not assist in rendering the use of computers an aspect of the substance of the invention that may be considered patentable (as per RPL Central at [104]).
A number of submissions made by the applicant in addition to comments by the applicant’s expert in his declaration support my finding that the substance of the invention is as I have identified:
“…what occurs is a process whereby the downloaded program or script collects data and determines whether and when and where to insert an engagement offer - unrelated to any subsequent advertising - into the publisher's content. This is a qualitatively different and new step that is not found in the prior art, in which the choice of advertisements does not involve an unrelated "engagement offer" step (and additionally is not contingent on the user successfully accepting the offer, as in the invention): see Bell declaration, para 24 and 26.” (my emphasis) Applicant’s written summary of submissions at [31]
“It is this use of engagement offers, which may eventually culminate in the showing of an unrelated advertisement if the offers are accepted, that is novel and that produces the benefits of this invention.” Applicant’s written summary of submissions at [35]
“The ROKT Method is a new form of presenting advertising that is different from traditional cookie-based advertising, which relies on analysis of browsing history (which is stored as files on the user's computer), to determine what advertising content to show the user. Also, traditional online advertising inserts advertisements in a way that is intrusive and disruptive to a User using a Publisher's site, and in doing so has a disengaging effect on them. In contrast, the ROKT Method determines when a User has just completed some kind of engagement with the Publisher's content, and only then displays an Engagement Offer. We have discovered that doing so has the effect of keeping the User engaged with the site, rather than disrupting them. Additionally, the ROKT Method only shows advertisements to a User if they interact positively with Engagement Offer(s), thereby carrying across their positive disposition to the showing of advertisements, and only showing them when a User is both ready for them and positively disposed to them. The ROKT Method also allows for selection of more relevant Engagement Offers and Advertisements for the User than in current forms of online advertising.” Declaration of Mr Seth Bell at [26]
“The invention that is claimed is: the addition to a webpage (or app) of an offer or offers (that are not themselves advertisements), that appear only at a time determined to be appropriate (if any), and that offer something interesting or of benefit to a user; where the widget will, if and only if the User engages positively with the offer, then display an advertisement; and where the offer(s) bear no relation to the advertisement or advertised product, but have the function of creating for the User a positive experience that inclines them to engage with an advertisement at a much higher rate than is the case with traditional online advertising. The use of an Engagement Offer in this way is novel, and as I will show, has a marked, demonstrable and non-trivial effect on the User's behaviour.” Declaration of Mr Seth Bell at [32]
Is the substance patentable subject matter?
A first submission of the applicant is that:
“Contrary to the Examiner’s reasoning, this is not a “mere presentation of information”, and the program is functioning as far more than an intermediary that adds “nothing of substance” to the “idea”… The program is an indispensable aspect that actively controls whether an engagement offer is to be shown, when it is to be shown, how it is to be shown, and it gathers data… so that the back-end program can select the most appropriate engagement offer to be shown…”
To me it may well be incorrect to simply categorise the substance of the invention (identified above at [33]) as merely the presentation of information. In this sense, particular information is presented at a particular time for a specific purpose under specific rules, so I can accept that the substance of the invention is directed to an ordered presentation of certain information that has positive effects on a person’s disposition. Regardless, the substance of the invention is still nothing more than this.
It is abundantly clear that the program is an important aspect of the claim that performs steps that facilitate the insertion of an engagement offer. In this sense I accept that there is no point in imagining the invention operating outside of a computer in as much as the invention being capable of being performed by human hand. What is important in the context of the program is that it is apparent from the information before me that the normal operation of a “widget script” is to: arrive at a user device with publisher content; to run on the local device to gather data and work out when to insert information such as an advertisement; to send this data to a remote advertising server such that the server can decide what information to insert into/over publisher content; and to insert the information selected by the advertising server.
Therefore, I simply see no ingenuity in the program itself that may confer patentability. Instead the ingenuity of the claimed invention lies in the particular steps the program is performing. That is, inserting an engagement offer before advertisements, whereby advertisements are only provided to a user if the user accepts the engagement offer. The program itself as claimed adds nothing of substance to these steps.
The applicant made reference to Welcome Real-Time SA v Catuity Inc (2001) 51 IPR 327 (Catuity) at 350 [108] where Heerey J commented on physical effects which confer patentability in CCOM and IBM.
“… in each case there was a physically observable effect that met the manner of manufacture requirement: the screen curve in IBM and the retrieval to graphical representations of desired characters for the assembly of text in CCOM.”
They noted that in the present case:
“… it is the modification of the arrangement of the publisher's content by the program and the appearance on the user's device, in consequence, of (first) the engagement offer(s) and then, if the offer or offers are accepted, one or more advertisements… The program also causes the computer to respond to the user's interaction with the engagement offer and any advertisements - for example, by … switching from an engagement offer to an advertisement… These are all “physically observable effects”.”
There is no doubt something physically observable occurs in the present invention in the form of the display of an engagement offer before an advertisement. However, as identified by Heerey J in Catuity, the physically observable effect must nonetheless meet the manner of manufacture requirement. This amounts to an assessment of the substance of the invention in view of case law such as NRDC, RPL Central and Research Affiliates.
In the context of NRDC the applicant points to the empirically-verified positive effect upon customer engagement of the invention in arguing that:
“… the claimed invention creates a “new and useful effect”, which is a practical and useful result in the field of economic endeavour.”
“…use of the method produces “a useful physical result in relation to a material or tangible entity”…”
Similarly, the applicant makes reference to Catuity and CCOM in stating there is:
“…an “artificial state of affairs” in the field of economic endeavour… [that has] economic and societal benefit to those users, but also to publishers [and] advertisers…”
Most simply expressed, it is clear to me that the substance of the invention is inserting an engagement offer before advertisements, whereby advertisements are only provided to a user if the user accepts the engagement offer. The invention is clearly directed towards a strategy of advertising which aims to provide information to a user in a manner that would make them positively disposed to take action and chose to view an advertisement.
With reference in particular to the seminal law of NRDC, I fail to see any result in an art whereby a material advantage of utility might be observed. In this, the substance of the invention does not lie in what may be regarded as a practical art, but instead lies in a scheme for advertising to a customer such that they are more inclined to positively interact with advertisements. This is achieved by inserting something that is not an advertisement before the provision of an advertisement, such that a customer might be more interested in seeing said advertisements. While there may be a positive effect measurable when using the technique, this effect simply relates to a positive human disposition. To me, it must be said that the invention is merely an advertising scheme which is not patentable subject matter in accordance with established case law. The subject matter is in an art of human activity or human interaction, and clearly distinguishable from cases like CCOM and IBM where the substance of the invention solved what could be regarded as a technical limitation in computer technology.
Reference was also made by the applicant to RPL Central where it was stated that:
“…the invention solves a technical problem in traditional computer advertising systems, in which advertisers achieve only a low conversion rate, with attendant cost to them (of paying for display advertisements of no interest to the user), and where publishers find that their sites present advertisements of virtually no interest to its users most of the time, and where those users are correspondingly confronted with advertisements of virtually no interest to them.”
I consider that the identification of this particular problem by the applicant reinforces my finding that the claimed invention is directed towards a mere scheme. To state that there is an issue in computer advertising in which advertisers achieve low conversion because of a lack of user interest is hardly a problem, that lies in a computer advertising system as such, that can be considered in any way technical. The problem is one of human desire to receive, or more importantly to generally avoid receiving, advertising material when they are browsing the internet. The solution to this problem provided by the substance of invention is not technical, but instead appears to represent a new scheme for conducting advertising or more broadly, conducting business.
As per Research Affiliates and RPL Central “there is a distinction between technological innovation which is patentable and business innovation which is not”. The present invention can be characterised as the latter.
Therefore I find that claim 1 is not directed to a manner of manufacture. The remaining claims do not add any patentable subject matter to the substance of the invention and hence all of the present claims are not patentable.
Conclusion
I conclude that the claims are not directed to a manner of manufacture.
There exists subject matter in the description that has not been specifically addressed at this stage. I have reviewed this subject matter absent any submissions from the applicant and do not consider, on its face, there to be any patentable subject matter here. However, at the hearing the applicant sought a final opportunity to file amendments and make submissions in the event of an adverse decision. I will provide such a period being 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.
Dr N.R. Madsen
Delegate of the Commissioner of Patents
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