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
Cases
Facebook, Inc. [2020] APO 19
Aristocrat Technologies Australia Pty Ltd [2016] APO 49
Further information about patent rights
If you need assistance with protecting or enforcing your patent rights, contact us for a confidential and obligation-free discussion:
Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
T: +61 7 3221 0013 (preferred)
M: +61 419 726 535
E: mburrows@dundaslawyers.com.au
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.
Related insights about patent rights
-
The © (copyright) symbol in use
It is something that is often overlooked, however it is considered best practice to add a copyright statement and the little © symbol (Copyright Statement) on any literary or artistic works (Works) that a business publishes and asserts that it owns. Under Australian law, the “material form” of all original Works is automatically protected by…
-
The Digital ID Bill 2023 (Cth) – key points
On 30 November 2023, the Digital ID Bill 2023 (Cth) and the Digital ID (Transitional and Consequential Provisions) Bill 2023 (Digital ID Bills) were introduced in the Australian Senate. Digital IDs are designed to provide individuals with a convenient way to verify their identity when completing certain online transactions and dealing with government and certain…
-
Trade mark classification guidance from IP Australia
There has been a surge in trade mark applications in the digital space, notably concerning virtual goods, virtual environments such as the metaverse, NFTs, and the blockchain according to observations made by IP Australia. This article discusses the things to consider when selecting the classification(s) for virtual goods and services when filing an application for…
-
What are adequate cybersecurity measures?
The adequacy of cyber security measures was considered in the case of Australian Securities and Investments Commission v RI Advice Group Pty Ltd [2022] FCA 496 (ASIC v Ri Advice Group). One of the issues raised was whether the respondent had adequate cyber security and cyber resilience in place across its network of financial advisors. …
-
National Classification Scheme – proposed federal changes
Albanese Government announces intention to reform National Classification Scheme, proposing R18+ for games simulating gambling and M for computer games with paid loot boxes/in-game purchases linked to chance. Learn more about proposed reforms and if simulated gambling needs to be addressed.
-
Digital Platform Services Inquiry – submissions sought
The Australian Competition and Consumer Commission is investigating the activities of digital platform service providers and their impact on competition, consumerism, and business. Have your say and make a submission by 5 April 2023. Learn more in the seventh report of the Digital Platform Services Inquiry.
-
Australian legislation tackles loot boxes in video games
The Classification (Publications, Films and Computer Games) Amendment (Loot Boxes) Bill 2022 (Bill) has been tabled in the House of Representatives on the 28 November 2022. The private member’s Bill acts in response to growing support for the regulation of features and elements within video games which appear to simulate gambling.
-
Ed Sheeran wins “Shape of You” copyright case
This article examines the legal test for copyright infringement in Australia, using Ed Sheeran’s Court case in the UK as an example. Find out how the Courts determine when a song is a copy of another and what the implications are for musicians.
-
Influencers now regulated when promoting therapeutic goods
The Therapeutic Goods Advertising Code 2021 (Cth) (2021 TGA Code) brings regulations for social media endorsements of therapeutic goods. Learn more about the changes and how to ensure compliance before they take effect on 1 January 2022.
