Facebook Conversion Tracking is Patentable Subject Matter.


Australian patent application 2014209546  is entitled “Conversion tracking for installation of applications on mobile devices“. In Facebook, Inc. [2020] APO 19, the Delegate of the Commissioner of Patents ruled that the invention qualifies as patentable subject matter.

The field of the invention is described in the patent application as relating to “conversion tracking, and in particular to tracking installations of native applications on mobile devices, in particular to a computer-implemented method.” The  invention is described as solving a problem relating to apps downloaded onto devices. A user in a social media platform might click on a link to an advertised app, which takes the user to the app store. The app store and the social media platform are different environments. There is no way to know that the advertised app is already on the user’s device.

Claim 1 is worth reproducing. It sets out the solution clearly:

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.

In a series of responses and reports, the examiner contended that the substance of the invention “lies in the conveying of a particular message (that an application has been installed) to a particular computer (the online system).”  Then, according to the examiner: “An invention defined in substance by the specific information it transmits, as opposed to the manner in which that data is transmitted, is not patentable subject matter.”

Facebook referred to two native applications, Facebook and Uber. When ordinarily installed, they are “sandboxed”. This means that they are not able to communicate with each other. The Applicant submitted that this ‘sandboxing’ creates a technical problem in the architecture of a mobile device. According to the Applicant, this technical problem is overcome by the invention involving the steps of (i) packaging data capable of installing a native application on a mobile device with code which, (ii) when executed writes information to a shared memory location on the mobile device. That information includes an indication that the native application was installed on the mobile device.

Citing Aristocrat Technologies Australia Pty Limited [2016] APO 49, the Delegate set out a useful check list for patentable subject matter in this field:

  • There must be more than an abstract idea, mere scheme or mere intellectual information.
  • Is the contribution of the claimed invention technical in nature?
  • Does the invention solve a technical problem within the computer or outside the computer?
  • Does the invention result in improvement in the functioning of the computer, irrespective of the data being processed?
  • Does the application of the method produce a practical and useful result?
  • Can it be broadly described as an improvement in computer technology?
  • Does the method merely require generic computer implementation?
  • Is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea?
  • Is there ingenuity in the way in which the computer is utilised?
  • Does the invention involve steps that are foreign to the normal use of computers?
  • Does the invention lie in the generation, presentation or arrangement of intellectual information?

In consideration, the Delegate noted that:

“[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 secondly 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 parties agreed that the invention results in conversion metrics for advertising being collected. The Applicant submitted that the invention is economically useful in the field of advertising because it allows conversion tracking for advertisements. They contented that this was not the substance of the invention. It was one of the reasons why the invention has economic utility. The Delegate agreed with this.

The Delegate held that it was relevant to refer to prior art, based on the decision in Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988. Such reference is necessary to assess whether there is a contribution to a technical field. The Delegate found that the state of the art did not involve downloading a set of instructions that includes instructions to write data into a shared memory and another app accessing that and sending it back to an online system along with user data. This does not break through the sandboxing. The sandbox is still there. It provides a workaround for the barrier of both sandboxing and the inability of native applications to access the cookies of other applications using the instructions that are provided with the app download.

The Delegate applied the checklist above. The examiner had characterised the substance as “the conveying of a particular message (that an application has been installed) to a particular computer (the online system)”. The Applicant contended that this does not reflect the current claims because of the inability of native applications to know of each other’s co-existence because they are “native applications”.  The Delegate agreed and held that there did appear to be “something new being done here”. There was no evidence that there was more efficient operation of a device. However, the device “is now able to do something that it could not do previously”. That is a technical improvement.

The Delegate was of the view that the technical limitation “must be 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.” The invention works around this limitation and so must be a technical improvement in the device, according to the Delegate. The Delegate concluded that the substance of the invention is a technical improvement in the functioning of the device and the claims were therefore directed to a manner of manufacture.