Legal Research
Cases
Accenture Global Services Limited

Accenture Global Services Limited

Case [2021] APO 34 9 September 2021

No judgment structure available for this case.

Type to search within this case.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Accenture Global Services Limited [2021] APO 34
Patent Application: 2018260878

Title:System, Method, and Apparatus for Capacity Determination for Micro Grid, and Tangible Computer Readable Medium

Patent Applicant: Accenture Global Services Limited

Delegate:Shreyas Kumar

Decision Date: 9 September 2021
Hearing Date: Written submissions filed on 8 January 2021

Catchwords: PATENTS – section 45 – examiner’s objection – whether invention is a manner of manufacture – scheduling of multi-energy in a micro grid – device capacity determination – no technical or material advantages – the claimed invention is not a manner of manufacture – absence of technical contribution – application refused.

Representation: Patent attorney for the applicant: Murray Trento & Associates Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018260878

Title:System, Method, and Apparatus for Capacity Determination for Micro Grid, and Tangible Computer Readable Medium

Patent Applicant: Accenture Global Services Limited
Date of Decision: 9 September 2021
DECISION

The claims of the application do not define a manner of manufacture. There is no material in the body of the specification that may be included in the claims to overcome this finding. On the basis of this finding, the application is refused.
REASONS FOR DECISION

Background

The present matter concerns patent application 2018260878 (“the application”) by Accenture Global Services Limited (“the applicant”). The applicant filed the application on 07 November 2018 as a divisional application of 2014409485 (“the parent”), itself a national phase entry of PCT/CN2014/088992 consequently providing the application with a priority date of 21 October 2014.
The parent was the subject of four examination reports prior to lapsing for failure to gain acceptance within the prescribed time-period. The first report on the parent raised objections for manner of manufacture and inventive step. The latter was overcome by amendment. The manner of manufacture objection was maintained through three further adverse reports until the parent lapsed.
The application has been the subject of three examination reports. The objection in the first report was that the claimed invention is not for a manner of manufacture. Despite responsive submissions from the applicant and a statement of proposed amendments to amend the description and the claims, the examiner maintained the manner of manufacture objection in a second and third report.
On 30 October 2020, the applicant wrote to the Commissioner requesting to be heard in relation to the matter in the third report, namely the outstanding objection that the claimed invention was not to a manner of manufacture.
On 02 December 2020, the Commissioner wrote to the Applicant indicating that the hearing would be conducted by way of written submissions due to be filed by 11 January 2021. The applicant filed the submissions in this regard on 08 January 2021 (“the applicant’s submissions”).
While the final date for acceptance of the application was 13 November 2020, patent subregulation 13.4(1)(g) may be available to extend the time for gaining acceptance to 3 months (or more via subregulation 13.4(3)) from the date of the…

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.

Continue reading Accenture Global Services Limited

Details

AGLC: Accenture Global Services Limited [2021] APO 34
Case: [2021] APO 34
Decision Date: 9/9/2021

CaseChat Overview and Summary

In the matter of Accenture Global Services Limited, the applicant, and the Commissioner of Patents, the respondent, the Federal Court of Australia was tasked with determining whether a patent application should be accepted. The crux of the dispute was whether the invention described in the application complied with the requirements of section 45 of the Patents Act, specifically whether it constituted a manner of manufacture. The invention related to a system for scheduling multi-energy in a micro grid and determining device capacity. The Commissioner objected to the patent on the grounds that the claimed invention did not possess any technical or material advantages and, therefore, did not qualify as a manner of manufacture.

The legal issue before the court was whether the invention described in the application met the statutory criteria for a patentable manner of manufacture under section 45 of the Patents Act. The court had to consider whether the invention provided a technical contribution and possessed advantages over existing technology. The applicant argued that the invention constituted a manner of manufacture as it provided a new and improved method for managing energy resources within a micro grid. However, the Commissioner contended that the invention lacked a technical contribution and did not offer any material advantages over existing methods.

The court found that the invention did not provide a technical contribution and lacked any material advantages over existing technology. The invention involved the use of a computer program to manage energy resources, but this alone did not constitute a manner of manufacture under section 45 of the Patents Act. The court held that the invention did not possess any technical or material advantages, and therefore, the claimed invention was not a manner of manufacture. As a result, the application for the patent was refused.

The court ordered that the patent application be refused, and the Commissioner's objection was upheld. The court found that the invention did not meet the statutory criteria for a patentable manner of manufacture under section 45 of the Patents Act, and therefore, the application was denied. The decision in this case highlights the importance of ensuring that a patent application meets the statutory requirements for a manner of manufacture and possesses technical or material advantages over existing technology.

Orders