Thinking outside the sandbox: Australian Patent Office Decision Finding Computer Implemented Invention Patentable


Facebook, Inc. [2020] APO 19

A recent hearing decision by the Australian Patent Office highlights that a technical improvement to a general-purpose computer can be considered patentable subject matter in Australia. This decision also clarifies that even if a business problem is being addressed, the claimed invention can be considered patentable if a technical limitation of the computer is being solved.

Recent Decision

Australian Patent Application No. 2014209546 related to a computer implemented method to track, on a mobile device, the downloading of an advertised app via a social media platform. The method created a shared memory location on the mobile device that indicated the advertised app had been downloaded and allowed the social media platform to retrieve the information in the shared memory location and send it back to the social media platform for storage.

The Applicant, Facebook, set out in the specification that the method overcame deficiencies in the existing systems that fail to provide an app advertiser with proof that the app had been downloaded on the mobile device. For example, if a user in a social media application selected a link to download an app, a third-party application store of the mobile device (e.g. Apple’s App Store, Google Play) would not provide feedback to the social media platform indicating that the app had been downloaded.

Claim 1 of the patent application read:

 A method comprising:

receiving, from an online system, data comprising: (i) a client application for installation as a native application for execution by an operating system of a mobile device on which native applications are unable to access cookies, and (ii) one or more instructions from the online system that, when executed, writes data to a shared memory location included in the mobile device indicating the client application was installed on the mobile device;

executing the data comprising the client application to install the client application as a native application on the mobile device;

responsive to installing the client application on the mobile device, executing the one or more instructions received from the online system;

storing, in the shared memory location on the mobile device, an indication the client application was installed on the mobile device;

retrieving from the shared memory location the stored indication that the client application was installed on the mobile device and a user identification associated with a user of the online system and used by the online system to maintain data associated with the user, the stored indication and the user identification retrieved by an online system application installed as a native application and operating on the mobile device; and

sending from the online system application to the online system, the stored indication that the client application was installed on the mobile device and the user identification.

The “native application” feature in the above claim was only introduced via amendment during the hearing.

During examination, the patent examiner objected to the application on several grounds including manner of manufacture on the basis that the substance of the invention lay in the conveying of a particular message to a particular computer. The examiner maintained this objection in further reports, asserting that the claimed invention was a collocation of known integers and that there was no manner of manufacture. The examiner also asserted that the only reason the advertiser/social media platform could not access the third-party details was due to business rules, not a technical limitation. In the examiner’s words:

The only limitations to be overcome are the deliberately set permissions rather than any architectural limitations.

Facebook submitted that the limitations placed on access to the third party platform posed a technical problem that the invention solved. The Applicant argued that the applications used in the social media platforms are “sandboxed”, meaning they are not able to communicate information with other applications such as the third-party application. This, it was argued, posed a technical problem in the architecture of a mobile device. Facebook went on to argue that the invention provided functionality that was unknown before. This argument was only made possible with the inclusion of the above noted “native application” amendment.

The Delegate considered various factors which are generally considered indicative of whether a computer implemented invention is directed toward patentable subject matter. These factors include whether the contribution of the claim invention is technical in nature, whether the computer is merely an intermediary adding nothing to the substance of the invention, whether the claimed invention merely requires generic computer implementation, whether the invention results in an improvement in the functioning of the computer, and whether the claimed invention solves a technical problem in the functioning of the computer.

The Delegate was of the view that the invention was not technical in nature, stating that:

…the substance lies in a series of steps where data is received, executed, an indication is stored, and then that indication is transmitted through a different app along with user information. The claims allow for advertising attribution and conversion tracking. In my view advertising attribution and conversion tracking is not technical in nature.

The Delegate also concluded that only generic computer implementation was required:

In this case, the information is retrieved by the online system application and sent back to the online system. I am not convinced that executing data and installing an application, writing an indication of installation in shared memory and sending it back to an online system via an online system application are not generic steps. Therefore, the current claims only require generic computer implementation.

The Delegate concluded that the invention was not a mere intermediary. However, the Delegate also concluded that there was no evidence that the claimed invention improved the operating efficiency of the mobile device.

The Delegate identified that the claimed invention addressed a business problem, namely, how to measure a conversion event. However, despite the conclusion, the Delegate also identified that the claimed invention addressed:

…a technical problem in the functioning of the computer…namely that native applications which do not have access to cookies are unable to communicate with other apps and are unable to tell if other apps are downloaded.

In considering the technical improvement of the claimed invention, the Delegate stated that:

Therefore, in my view, the sandboxing of native applications is a technical limitation faced by app developers. This sandboxing may indeed be deliberate at the hands of the manufacturer of those particular mobile devices it nonetheless exists. The utilisation of the shared memory requires code that is downloaded with the app itself in order to access the shared memory. The first app then access that shared memory and sends the information back to an online system along with user data. The sandboxing still exists, but the current invention works around it. This is a technical improvement in the device.  

Due to the Delegate concluding that the substance of the invention was a technical improvement in the functioning of the device, the claims were found to be directed toward patentable subject matter.

Key Takeaways

This decision demonstrates that a computer implemented invention solving a business problem, using a general-purpose computer, can be patentable in Australia if a technical limitation of the computer is being addressed. The decision also highlights that not all factors indicative of patentable subject matter need to be satisfied for a computer implemented invention to be found patentable.

Given the emphasis upon the technical characteristics of a computer implemented invention under patentable subject matter requirements in Australia, a patent specification for such technology should ideally include references to any technical limitations being addressed by the claimed invention.

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