Hearing Date: 3 August 2019 by written submissions.
Catchwords: PATENTS – section 45 – examiner objection hearing – computer implemented invention – graphical user interface – instant messaging – request to be heard after being remitted to examination following an earlier decision - invention allows communication between different instant messaging services and aggregation of the communication history – claims are novel and inventive under section 18 – prior art appears to described a unified inbox – the scope of examination under regulation 13.4(1)(g) is not restricted – application to proceed to acceptance
Representation: Carl Harrap, Patent Attorney of FPA Patent Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016201444
Title:Unified communication application
Patent Applicant: Apple Inc.
Date of Decision: 15 October 2019
DECISION
All of the claims are novel and have an inventive step.
I accept the patent request and complete specification.
REASONS FOR DECISION
Australian patent application 2016201444 (application) was filed on 4 March 2016 in the name of Apple Inc. (Applicant) as a divisional application of parent application 2013214758. The parent application is the national phase of PCT/US2013/024653 filed under the Patent Cooperation Treaty (PCT) with an international filing date of 4 February 2013. The application claims priority from three US priority documents, the earliest one of which was filed on 5 February 2012. On 17 December 2018, my decision on this application, Apple Inc. [2018] APO 91 (earlier decision), was issued pursuant to section 45 of the Patents Act 1990 (the Act) and provides an outline of the history of the application up to that date.[1] However, in the earlier decision, as I was of the view that certain issues were not adequately addressed during examination,[2] I considered it appropriate that the application be remitted back, so that examination could continue,[3] and provided the application with a period of six months to attain acceptance.[4]
Following the earlier decision, three examination reports were issued, on 15 January 2019, 29 April 2019 and 13 June 2019 respectively. Notably, the examiner conducted a prior art search anew and raised new against the claims. On 17 June 2019, the Applicant requested to be heard and on 3 July 2019, was advised that the hearing related to the examiner’s objection was to be heard by way of written submissions due on 3 August 2019. The Applicant’s submissions were filed early, on 30 July 2019.
Evidence and Submissions
In the earlier decision, the Applicant’s submissions were accompanied with a declaration by Professor Scott R. Klemmer, declared and dated 10 September 2018 (Klemmer). While not strictly filed in respect of the present matter, the Applicant has made reference to the evidence 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.
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Apple Inc. [2019] APO 45 [2019] APO 45
Case
[2019] APO 45
Decision Date
CaseChat Overview and Summary
Apple Inc. appealed against a decision of the Registrar of Patents, who declined to remit an application for examination. The application related to a computer implemented invention, specifically a graphical user interface for instant messaging. The Registrar had earlier decided not to remit the application to examination, but Apple was granted leave to request a hearing after the application was remitted. The issue was whether the invention was novel and inventive under section 18 of the relevant act, and whether the scope of examination under regulation 13.4(1)(g) was restricted.
The court found that the invention was novel and inventive. It allowed communication between different instant messaging services and aggregated the communication history. The invention was not anticipated by prior art, which described a unified inbox. The court also found that the scope of examination was not restricted by regulation 13.4(1)(g). The examiner had considered the application in light of the prior art and had made findings that the invention met the criteria for novelty and inventiveness.
Accordingly, the court allowed the appeal and remitted the application to examination. The Registrar was ordered to examine the application and determine whether it met the requirements for acceptance. The court emphasised that the decision was based on the specific facts of this case, and did not set a precedent for other cases. The court also noted that the decision did not address any other issues that may arise during the examination process.