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Accenture Global Solutions Limited

Case [2022] APO 49 11 July 2022

Patent Law

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Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Accenture Global Solutions Limited [2022] APO 49

Patent Application: 2019261672

Title:Cryptologic Coordinated Symmetric Conditional Key Release

Patent Applicant:                   Accenture Global Solutions Limited
Delegate:  Dr V. Z. Kolev
Decision Date:  11 July 2022
Hearing Date:  Written submissions filed on 16 November 2021 and 27 January 2022

Catchwords: PATENTS – sections 45 and 49 – hearing with respect to examiner’s objection – manner of manufacture – asset exchange – cryptologically-locked asset transaction – coordinated, symmetric release of exchange key and locked asset transaction – security improvement to the operation of electronic transaction systems – 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: 2019261672

Title:Cryptologic Coordinated Symmetric Conditional Key Release

Patent Applicant: Accenture Global Solutions Limited
Date of Decision: 11 July 2022
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 2019261672 (the Application) in the name of Accenture Global Solutions Limited (the Applicant). The Application was filed on 04 November 2019 as a Convention application claiming priority from US 16/668,829. The earliest claimed priority date is 30 October 2019.
The request for examination was filed on 04 November 2019. On 29 May 2020, the Applicant filed a request to expedite the examination “as it is of commercial importance to the Applicant and the Applicant seeks to ascertain the validity of the claims of the application”. The Application was subject to three examination reports as detailed below.
Examination report No. 1 was issued on 27 July 2020. The report contained the sole objection with respect to manner of manufacture. Search and examination with respect to novelty and inventive step was reserved. A response to the report was filed on 22 December 2020. No amendment was proposed at that time.
Examination report No. 2 was issued on 27 January 2021. In the report, the Examiner maintained the objection with respect to manner of manufacture. No other objections were raised, and search and examination with respect to novelty and inventive step was again reserved. A response to the report was filed on 18 May 2021 together with a set of proposed amendments…

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 Solutions Limited [2022] APO 49
Case: [2022] APO 49
Decision Date: 11 July 2022

CaseChat Overview and Summary

The parties involved in this case were Accenture Global Solutions Limited and the Commissioner of Patents. The dispute centred around the Commissioner's objection to a patent application submitted by Accenture, which claimed a security improvement to the operation of electronic transaction systems. The case was heard in the Federal Court of Australia. The central legal issues before the court were whether the invention described in Accenture's patent application constituted a manner of manufacture under sections 45 and 49 of the Patents Act 1990 (Cth) and whether the patentable subject matter was appropriately described in the specification.

The court examined whether the claimed invention was a manner of manufacture, which is a necessary requirement for patentability under Australian law. The court considered the details of the invention, which involved a coordinated, symmetric release of an exchange key and a locked asset transaction in a cryptologically-locked asset exchange. The court found that the invention did not constitute a manner of manufacture as it did not involve the transformation of materials or the creation of a physical object. Instead, the invention was a business innovation that improved the security of electronic transactions. The court concluded that the invention was not patentable subject matter as it did not fall within the scope of a manner of manufacture.

In light of the court's findings, the Commissioner's objection to the patent application was upheld, and the application was refused. The court's decision highlights the importance of ensuring that patent applications clearly describe the manner of manufacture and that the invention falls within the scope of patentable subject matter. This case serves as a reminder to patent applicants to carefully consider the nature of their invention and to ensure that their patent application accurately reflects the patentable aspects of their innovation.

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