Patent granted for software tracking user actions

In the recent case of Facebook, Inc. [2020] APO 19 (Facebook Inc.), the Patent’s office considered whether software that tracks the installation of applications on mobile devices following interactions with advertisements qualifies as a manner of manufacture and is therefore patentable subject matter.

Background of Facebook Inc.

Facebook filed an application for letters patent relating to ‘conversion tracking’, which describes the tracking of installations of native or mobile applications by users as a result of interactions with advertisements.  The issue was whether the application was a computer-implemented method.  The claimed invention tracks how advertisements from social media sites direct users to download a mobile application from an app store.  It works as follows:

• the data of mobile application includes instructions from the social media site to store an indication the mobile application had been downloaded in a “shared memory location” on the device; then
• the social media platform retrieves information from the “shared memory location” about the download of the mobile application and sends it back to the online system of the social media site.

The invention overcomes the difficulties of native or mobile applications being ‘sandboxed’.  Sandboxing occurs when two native applications are unable to convey information with each other, which causes difficulty for advertisers to determine whether users that interacted with their advertisement have utilised a link in the advertisement to download an application or not.  However, Facebook’s invention allowed data to be written to a shared memory location that is external to the sandbox of the application, hence enabling the sharing of information.

Can generic computer implementation still provide a technical improvement?

The decision of a Delegate of the Commissioner of Patents (Delegate) focused on the consideration of the five factors taken from Aristocrat Technologies Australia Pty Ltd [2016] APO 49 (Aristocrat).  These are:

• is the contribution of the claimed invention technical in nature?
• is the computer merely the intermediary, configured to perform the method, but adding nothing to the substance of the idea?
• does the method merely require generic computer implementation?
• does the claimed invention result in an improvement in the functioning of the computer, regardless of the data being processed?
• does the claimed invention solve a technical problem in the functioning of the mobile device?

The Delegate’s findings

The Delegate applied the Aristocrat factors above and decided that tracking advertising attribution and conversion tracking is not technical in nature, and merely addressed a business problem.  However it was highlighted that “the result that the invention provided is different from the substance of the invention”.  With respect to this, the Delegate said:

“[a] claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology”; and

“there must be more than an abstract idea: it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed”.

The Delegate acknowledged that the sand boxing of native applications was a technical limitation experienced by app developers.  The Delegate concluded that Facebook’s invention was a sand boxing workaround method, and thus decided that there was a technical improvement in the application.  Accordingly, the claims were found to be a manner of manufacture.

The Delegate accepted the invention functions entirely between a mobile device and an online system and hence “only require generic computer implementation”.  However he was not convinced that the steps of the claim were more than generic computer implementation.

The Delegate agreed with Facebook that the substance of the invention was inaccurately characterised by the Examiner as the current claims were not reflected.  The Delegate said there was no evidence that the device operates more efficiently, however was satisfied that the substance of the invention is a technical improvement in the operation of the computer.

Takeaways

The Australian Patent Office may be flexible in deciding when computer-implemented inventions are patentable.  The decision emphasises that not all factors previously recited for determining a patent of a computer-implemented invention need to be satisfied.  Furthermore, an invention that solves a business problem is considered as patentable subject matter even if it only requires generic computer implementation, so long as the technical improvement provided by the invention is correctly set out by the claims.

Links and further references

Legislation

Patents Act 1990 (Cth)

Cases

Facebook, Inc. [2020] APO 19
Aristocrat Technologies Australia Pty Ltd [2016] APO 49

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Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

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