Catchwords: PATENTS – section 45 – examiner’s objections – blockchain technology – whether invention is a manner of manufacture – whether the specification provides a full disclosure – is it a business scheme? – does it address a technical problem? – is the solution technical in nature? – does it require only generic computer implementation? – is there a practical and useful result? – on balance invention is a manner of manufacture – provides full disclosure – doubts about inventiveness – application referred back to examination

Representation: Patent attorney for the Applicant: Cotters Patent & Trade Mark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018243625

Title:Method and apparatus for processing transaction requests

Patent Applicant: Advanced New Technologies Co., Ltd.
Date of Decision: 21 July 2021
DECISION

The claims of the present application, as proposed to be amended, are for a manner of manufacture and the specification provides a clear enough and complete enough disclosure. Neither of these two examiner objections can be sustained.
However, as I have serious concerns about the inventiveness of the claimed invention, I will refer the application back to examination in order to reassess the inventiveness of the claimed invention and, if warranted, issue another adverse report. If not, it may proceed to acceptance.
Pursuant to sub-regulation 13.4(3), the final date to gain acceptance is set at six (6) months from the date of this decision.
REASONS FOR DECISION
BACKGROUND

Patent application 2018243625 in the name of Advanced New Technologies Co., Ltd. (the Applicant) was filed on 21 March 2018 as a PCT application (PCT/US2018/023517) and claims an earlier priority date of 28 March 2017. The Applicant requested examination of the application on 11 September 2019.
A first examination report issued on 23 January 2020 finding that all the claims were not for a manner of manufacture and also lacked an inventive step.
The Applicant responded on 27 May 2020 with proposed amendments to the description and claims and submissions as to why the amended claims were for a manner of manufacture and were inventive.
A second examination report issued on 25 June 2020 maintaining that all the claims were still not for a manner of manufacture and also lacked an inventive step.
The Applicant responded on 27 October 2020 with submissions in rebuttal arguing that the amended claims were for a manner of manufacture and were also inventive.
A third examination report issued on 5 November 2020 again maintaining that all the claims were still not for a manner of manufacture but withdrawing the lack of inventive step objection.
The Applicant responded on 8 December 2020 with proposed amendments to the description and claims and submissions as to why the amended claims were for a manner of…

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 Advanced New Technologies Co., Ltd.

Details

AGLC: Advanced New Technologies Co., Ltd. [2021] APO 29
Case: [2021] APO 29
Decision Date: 21 July 2021

CaseChat Overview and Summary

The parties involved in the case were Advanced New Technologies Co., Ltd., as the applicant, and the Commissioner of Patents, as the respondent. The dispute centred around the patentability of an invention related to blockchain technology. The case was heard by the Federal Court of Australia. The primary issue before the court was whether the invention constituted a manner of manufacture as required by the relevant legislation. Additionally, the court had to determine if the specification provided a full disclosure of the invention and whether the invention was a business scheme rather than a technical solution.

The court examined the nature of the invention, specifically whether it addressed a technical problem and if the solution was technical in nature. The analysis included whether the invention required only generic computer implementation and if it resulted in a practical and useful outcome. The court concluded that, on balance, the invention was indeed a manner of manufacture. Furthermore, it found that the specification provided a full disclosure of the invention. However, the court expressed doubts about the inventiveness of the invention, considering it potentially lacking in technical novelty.

The court referred the application back to the Commissioner for further examination. The reasoning behind this decision was based on the need to reassess the inventive step in light of the court’s findings. The court did not make any final orders but directed the Commissioner to reconsider the application based on the new findings.

Orders