Facebook wins on patentable subject matter despite generic computer implementation


In a recent Australian Patent Office decision of Facebook, Inc. [2020] APO 19 (21 April 2020), a Delegate for the Commissioner of Patents (the Delegate) found that claims to a method that helps applications share information are directed to patentable subject matter based on the technical improvement provided, despite concluding that the claims only required generic computer implementation.

The new decision sees the Delegate ask key questions to determine the substance of the invention. Whilst the invention was found not to be technical in nature, and only to require generic computer implementation, it was considered that the invention addressed a technical limitation and provided a technical improvement. In the end, the invention was found to constitute patentable subject matter under Australian law.

The Application

The subject of the long-awaited decision was Australian patent application no. 2014209546 (the Application) entitled “Conversion tracking for installation of applications on mobile devices” in the name of Facebook, Inc (Facebook). Facebook requested a hearing back in August 2018, reaching an impasse with the Examiner after a fourth Examination Report was issued. The only matter under consideration was the outstanding patentable subject matter / manner of manufacture objection.

The Application provides a method which enables applications to communicate with each other by accessing a shared memory. Most applications, when installed on a mobile device, are “sandboxed”, which means that application data and code execution are isolated from other applications. As such, the applications do not have the ability to communicate with each other. This can make it difficult for advertisers to track whether their advertisement is successful in getting a user to download a new app.

Facebook’s invention enabled data to be written to a shared memory location that is outside of the application’s sandbox, allowing them to share information with each other. So, using an example from Facebook’s hearing submissions, when a user sees an advertisement for Uber while browsing Facebook, and then downloads the Uber application by clicking on the advertisement link, Facebook can know that the Uber application has been installed and pass this information back to Uber.

The Decision

The decision of the Delegate relied upon 5 key questions in assessing whether the invention was a manner of manufacture. There were taken from the considerations discussed in Aristocrat Technologies Australia Pty Limited[1] (Aristocrat). These questions included:

  • Is the contribution to the claimed invention technical in nature?
  • Is the computer merely the intermediary, configured to carry out the method, but adding nothing of the substance of the idea?
  • Does the claimed invention merely require generic computer implementation?
  • Does the invention result in an improvement in the functioning of the mobile device?
  • Does the claimed invention solve a technical problem in the functioning of the computer?

The Delegate concluded that the claims allow for advertising attribution and conversion tracking, but considered that this was not technical in nature.[2] Although accepting that the use of the computer was intrinsic to the claimed method, he was not convinced that the steps of the claim (including executing data and installing an application) were more than generic computer implementation.[3]

However, upon consideration of whether the invention resulted in an improvement, the Delegate agreed that the method performed something new. There was enough detail to show that the device was now able to do something it could not do previously, and provided a technical improvement.[4] There was also agreement that the inability for some applications to communicate information was a technical limitation faced by application developers. Interestingly, the Delegate recognised that the “sandboxing” (or isolating) of applications still exists in light of the method being utilised, but that the invention works around the existing system.[5]

In light of the clear technical limitation along with the ability to perform something new, there was found to be a technical improvement in the device.

Key Points

Although the claims in this instance were not considered to be technical in nature, this does not mean that they did not address a specific technical problem. The key, in this case, was including enough information in the claims to specify that the method concerned a specific type of application (the type that could not communicate with each other). This addition made it clear to the Delegate that the invention solved, or worked around, a precise technical limitation.

Further, the decision provides a bona fide example that satisfying all the points outlined in Aristocrat is not necessary to show that the invention is patentable subject matter. The fact that the computer was intrinsic to the method and that there was a clear technical improvement provided by the method was enough to establish that the invention was patentable subject matter. This reiterates the importance of providing specific technical details when drafting a patent specification to ensure that the technical improvements provided by the invention are clear and unambiguous.

It will be interesting to see whether a similar approach is applied by the Full Court when it hands down its judgement in Commissioner of Patents v Rokt Pte Ltd later in the year.

[1] [2016] APO 49.

[2] Facebook, Inc. [2020] APO 19 (21 April 2020) at [79].

[3] Ibid [80] to [82].

[4] Ibid [83].

[5] Ibid [84] to [85]

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