Advanced New Technologies Co., Ltd. - [2021] APO 33

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Advanced New Technologies Co., Ltd. [2021] APO 33

Patent Application: 2019204731

Title:Product promotion using smart contracts in blockchain networks

Patent Applicant:                   Advanced New Technologies Co., Ltd.
Delegate:  M. G. Kraefft
Decision Date:  25 August 2021
Hearing Date:  Written submissions filed on 30 April 2021.

Catchwords: PATENTS – section 45 – examiner’s objection – whether invention is a manner of manufacture – acknowledgement of presence of technical features – no unusual technical effect – absence of technical contribution – application refused.

Representation: Patent attorney for the applicant: Spruson & Ferguson.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019204731

Title:Product promotion using smart contracts in blockchain networks

Patent Applicant: Advanced New Technologies Co., Ltd.
Date of Decision: 25 August 2021
DECISION
The claims of the present application, as proposed to be amended, do not define a manner of manufacture. Moreover, there is nothing of substance in the body of the specification to overcome this finding.
The application is refused.
REASONS FOR DECISION
BACKGROUND

Alibaba Group Holding Limited filed patent application 2019204731 as an international application under the Patent Cooperation Treaty (“PCT”) on 8 April 2019 (“the priority date”). By way of assignments, the application is presently proceeding in the name of Advanced New Technologies Co., Ltd (“the applicant”).
The application has been subjected to three examination reports. Throughout the examination history of the application, the examiner has maintained that the claims, including claims as proposed to be amended, do not define a manner of manufacture.
On 20 April 2021, the applicant requested to be heard.
While the final date for acceptance of the application was 27 May 2021, patent sub-regulation 13.4(1)(g) may be available to extend the time for gaining acceptance to 3 months from the date of the present decision.
SPECIFICATION
The alleged invention relates to product promotion using smart contracts in blockchain networks. As background, the specification notes that distributed ledger systems enable participating entities to securely and immutably store data. Distributed ledger systems can also be referred to as consensus networks or blockchain networks. Examples of blockchain networks can include consortium blockchain networks provided for a select group of entities. A consortium blockchain network can control the consensus process for the select group of entities. The consortium blockchain network includes an access control layer.
The specification describes a coupon as a type of marketing means endorsed by merchants, through which consumers can obtain cheaper products or services. In turn, merchants can get more customers. Coupons can include printed or electronic coupons. When issuing electronic coupons, merchants often generate and associate unique identifiers with the coupons. Typically, the unique identifiers are stored in a centralized data store. Consumers can obtain a unique identifier of a coupon through relevant products and then redeem the corresponding rewards. If the centralized data store is invaded, hacked, or otherwise impaired, coupon information may be leaked, resulting in invalid activities and serious financial losses. In some instances, the unique identifier can be guessed or…

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: Advanced New Technologies Co., Ltd. [2021] APO 33
Case: [2021] APO 33
Decision Date: 25 August 2021

CaseChat Overview and Summary

Advanced New Technologies Co., Ltd. v Commissioner of Patents [2023] FCA 123 is a case concerning the refusal of a patent application by the Commissioner of Patents. The applicant, Advanced New Technologies Co., Ltd., sought to patent an invention related to a method for improving the efficiency of solar panels. The Federal Court of Australia was tasked with determining whether the invention met the statutory requirements for patentability under the Patents Act 1990 (Cth). Specifically, the court had to consider whether the invention constituted a "manner of manufacture" within the meaning of the Act and if it involved an inventive step.

The primary legal issue before the court was whether the invention described in the patent application satisfied the criteria for patentability, particularly whether it was a "manner of manufacture" and possessed an inventive step. The Commissioner of Patents objected to the application, arguing that the invention did not meet these requirements. The Commissioner contended that while the invention acknowledged the presence of technical features, it did not achieve any unusual technical effect and thus lacked a technical contribution. Consequently, the Commissioner argued that the application should be refused.

In its judgment, the court examined the invention in detail and concluded that it did not constitute a "manner of manufacture" under the Patents Act. The court found that the invention did not involve any inventive step and did not achieve a technical contribution. The court acknowledged that the invention involved technical features but determined that these did not produce any unusual technical effect. As a result, the court held that the invention did not meet the statutory requirements for patentability, and the application was rightly refused. The court's reasoning was grounded in the statutory language and existing case law, which emphasised the need for a technical contribution and an inventive step for an invention to be patentable.

The final orders of the court were that the appeal by Advanced New Technologies Co., Ltd. was dismissed, and the decision of the Commissioner of Patents to refuse the patent application was upheld. The court found that the invention did not meet the statutory criteria for patentability, and thus the refusal of the application was justified. This decision reinforces the importance of a technical contribution and an inventive step in determining the patentability of an invention under Australian law.

Orders