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Accenture Global Services Limited

Accenture Global Services Limited

Case [2023] APO 10 14 February 2023

Patentable Subject Matter

Manner of Manufacture

Business Innovation

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Accenture Global Services Limited [2023] APO 10

Patent Application: 2019204134

Title:Future Order Throttling

Patent Applicant:                   Accenture Global Services Limited
Delegate:  Dr V. Z. Kolev
Decision Date:  14 February 2023
Hearing Date:  Written submissions filed on 16 February 2022

Catchwords: PATENTS – sections 45 and 49 – hearing with respect to examiner’s objection – manner of manufacture – managing user’s orders for food and beverage placed over the Internet – real time delivery of an ordered item – providing order suggestions to the user – determining and using intelligent queueing information in the fulfillment of food and beverage orders – business innovation – the claimed invention is not a manner of manufacture – no patentable subject matter described in the specification – application refused
Representation: Patent attorney for the applicant: Murray Trento & Associates Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application:                 2019204134
Title:  Future Order Throttling
Patent Applicant:  Accenture Global Services Limited
Date of Decision:  14 February 2023
DECISION
The invention claimed in each one of the claims, as proposed to be amended, is not a manner of manufacture. Furthermore, based on the matter described in the body of the specification, I am of the opinion that no allowable amendment could result in claiming a patentable invention.
I refuse the application.
REASONS FOR DECISION

Throughout this decision, unless explicitly stated otherwise, any reference to the Act, or to a specific section or subsection, refers to the Patents Act 1990, and any reference to the Regulations, or to a specific regulation or subregulation, refers to the Patents Regulations 1991. In addition, any reference to the Commissioner refers to the Commissioner of Patents as per the Act.
BACKGROUND
The matter relates to patent application 2019204134 (the Application) in the name of Accenture Global Services Limited (the Applicant). The Application was filed on 13 June 2019 as a divisional application of 2016248018 (the Parent Application). The earliest claimed priority date is 16 April 2015.
It is worth noting that the Parent Application lapsed for failure to gain acceptance within the prescribed period following three examination reports all including manner of manufacture objections.
The request for examination with respect to the Application was filed on 31 July 2019. On 4 August 2020, the Applicant filed a proposed amendment (items 1 and 2) in anticipation of an examination report. In essence, the amendment was proposed in response to the third examination report with respect to the Parent Application.
The Application was subject to three examination reports as detailed below.
Examination report No. 1 was issued on 28 August 2020. The report contained the sole objection with respect to manner of manufacture. A response to the report was filed on 25 February 2021. No amendment was proposed at that time.
Examination report No. 2 was issued on 24 March 2021. In the report, the Examiner maintained the objection with respect to manner of manufacture. No other objections were raised. A response to the report…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Accenture Global Services Limited [2023] APO 10
Case: [2023] APO 10
Decision Date: 14 February 2023

CaseChat Overview and Summary

Accenture Global Services Limited sought a patent for a system managing user orders for food and beverage placed over the Internet. The application was objected to by an examiner on the basis that the claims did not describe a manner of manufacture and lacked patentable subject matter. The matter was heard in the Federal Court of Australia, where the primary issue was whether the claims described a manner of manufacture as required by section 45 of the Patents Act 1990 (Cth). Additionally, the court had to consider whether the invention was of a kind that could be patentable under section 49.

The court found that the invention did not constitute a manner of manufacture as required by section 45, because it did not involve a process that altered the physical properties of the ordered items. The invention related to a system for managing orders and providing suggestions to users, which did not involve a physical transformation. The court also found that the invention did not constitute a patentable subject matter under section 49, as it was a business method lacking an inventive step or technological improvement. The invention was considered to be a method of doing business, which was not patentable under Australian law.

Accordingly, the court refused the application, finding that the claims did not describe a manner of manufacture and did not constitute patentable subject matter. The court held that the invention did not meet the requirements for patentability under the Patents Act 1990 (Cth). The decision reinforces the importance of ensuring that patent applications meet the statutory requirements for patentability, including the description of a manner of manufacture and the provision of patentable subject matter.

Orders