Rebecca Currey and Jane Owen provide a brief overview of the latest developments in terms of patents relating to digital advertising platforms in Australia.

Following a couple of high profile Australian Federal Court cases (RPL and Research Affiliates), the Australian Patent Office has been reticent to grant patents in relation to computer-implemented business methods.  However, the Australian Federal Court has recently allowed an appeal from an Australian Patent Office decision in relation to a “dynamic context based advertising system” which might give more latitude to the Australian Patent Office in considering the patentability of these types of inventions.

The case, Rokt Pte Ltd v Commissioner of Patents (which is now the subject of an appeal), considered whether the digital advertising system in question was either (a) a business method put into a computer – which would not be patentable; or (b) was an improvement to computer technology – which could be patentable. The Court allowed the appeal and held that the invention “was one in which the use of computers was integral to the invention in the sense that there is an invention in the way which the computer carries out the business scheme. The implementation of the invention was not possible without the use of a computer – and the substance of the invention involved the new functioning given to the computer”.

There is also another case on appeal to the Full Federal Court, Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421, which raises similar issues, and for which judgment is eagerly awaited. This case is likely to help to further clarify the law relating to patentability of computer-implemented business methods in Australia. Until the Infotrack judgment is handed down, we expect that the Australian Patent Office will continue cautiously in cases of computer implemented inventions. It will also be very interesting to see what happens in the Rokt appeal.

This article was written by Jane Owen (Partner) and Rebecca Currey (Snr Associate), of our IP team in Sydney. A longer version can be found here: https://www.twobirds.com/en/news/articles/2019/australia/move-back-patentability-computer-implemented-business-methods. We at MediaWrites will provide updates on these significant patent cases for media businesses in Australia in due course.