Legal Research
Cases
Apple Inc.

Apple Inc.

Case [2021] APO 18 20 April 2021

Patentability

Inventive Step

Patent Claims

Intellectual Property Law

No judgment structure available for this case.

Type to search within this case.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc. [2021] APO 18
Patent Application: 2018201089

Title:Context-specific user interfaces

Patent Applicant: Apple Inc.

Delegate:R Subbarayan

Decision Date: 20 April 2021

Hearing Date: Written submissions filed on 12 February 2021

Catchwords: PATENTS – Examiner Objections – editing clock face in a smart watch – whether the claims are for a manner of manufacture – whether the claims are inventive – neither objection can be maintained – application to proceed to grant

Representation: Patent attorney for the applicant: FPA Patent Attorneys Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018201089

Title:Context-specific user interfaces

Patent Applicant: Apple Inc.
Date of Decision: 20 April 2021
DECISION

The claimed invention is to a manner of manufacture and does not lack an inventive step in light of the cited prior art.
I am also satisfied that no other ground of objection applies. I therefore direct that the application proceeds to acceptance.
REASONS FOR DECISION

BACKGROUND

Application 2018201089 was filed on 14 February 2018 by Apple, Inc. (the Applicant) as a divisional application of 2015298710 (the Parent) and through this Parent claims an earlier priority date of 2 August 2014. A request for examination of the application was filed with the patent request.
The first examination report issued on 11 October 2019 raising objections on the grounds of manner of manufacture and inventive step. The applicant responded on 26 June 2020, proposing amendments to the claims that they submitted overcomes the objections raised. A second examination report issued on 23 July 2020, maintaining the manner of manufacture objection alone. The Applicant responded to this report on 25 September 2020 with submissions rebutting the examiner’s objection. On 12 October 2020, the applicant wrote to the Commissioner that as the examiner had verbally indicated that he intends to maintain the manner of manufacture objection, they wish to be heard in this matter through written submissions. The Commissioner wrote to the applicant on 10 November 2020 setting a period of 4 weeks for the applicant to file their written submissions. In that same letter the Commissioner also reintroduced an inventive step objection based on new prior art.
Upon request by the applicant the deadline for filing written submissions was extended in light of the new inventive step objection. The written submissions for the hearing were filed on 12 February 2021.
While not directly relevant to the present decision, I note that the Parent was also the subject of a written hearing decision[1] in relation to an examiner objection on the ground of manner of manufacture, with the delegate finding that the claimed invention was for a manner of manufacture. The Parent has since been granted.
[1] Apple, Inc. [2019] APO 32
APPLICABLE LAW
On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations. As the application was filed on 14 February 2018, the amended provisions of the Act and Regulations apply to the examination 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 Apple Inc.

Details

AGLC: Apple Inc. [2021] APO 18
Case: [2021] APO 18
Decision Date: 20 April 2021

CaseChat Overview and Summary

In the matter of Apple Inc., the applicant, the Federal Court of Australia considered objections raised by the Commissioner of Patents regarding the applicant's patent application. The invention in question involved editing a clock face on a smartwatch. The Commissioner raised two objections, firstly, whether the claims related to a manner of manufacture, and secondly, whether the claims were inventive. The applicant sought to have these objections dismissed to allow the application to proceed to grant.

The central issue before the court was whether the claims in the application related to a manner of manufacture, as prohibited under section 6(1)(a) of the Patents Act 1990 (Cth), and whether they were inventive, as required by section 18(1)(a) of the same Act. The court examined the nature of the invention and the claims, considering whether they represented a process or method of manufacturing, and whether they demonstrated an inventive step. The applicant argued that the invention was not a mere manner of manufacture and that the claims were inventive.

The court found that the claims did not relate to a manner of manufacture and were, in fact, directed to a functional aspect of the smartwatch's user interface. The court also concluded that the claims were inventive, as they represented a novel and non-obvious solution to the problem of editing a clock face on a smartwatch. The Commissioner's objections were dismissed, and the court ordered that the application proceed to grant.

Orders