Bellator Pty Ltd - [2018] APO 93

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Bellator Pty Ltd [2018] APO 93

Innovation Patent: 2017101681

Title:A method of innovation

Patentee: Bellator Pty Ltd

Delegate: Dr W.E. Guinea

Decision Date: 21 December 2018

Hearing Date: Written submissions filed on multiple dates, due to be filed by 5 October 2018

Catchwords: PATENTS – innovation patent – Examiner objections – manner of manufacture – invention is for a business scheme involving allocation of certain consideration in return for providing innovation services – all claims lack a manner of manufacture – no patentable subject matter in patent – patent revoked

Representation: Patent attorney for the Patentee: Bellator Patent & Trade Mark Attorneys

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Innovation Patent: 2017101681

Title:A method of innovation

Patentee: Bellator Pty Ltd

Date of Decision: 21 December 2018

DECISION

None of the claims are for a manner of manufacture. There is no material within the patent that would lead to a manner of manufacture if made the subject of a claim. I revoke the patent.

REASONS FOR DECISION

Background

Innovation patent 2017101681 (the “patent”) was filed on 2 December 2017 and is a divisional patent of patent application 2017204897 (the “parent application”). Consequently, the patent claims an earliest priority date of 14 July 2017.
Bellator Pty Ltd (the “Patentee”) requested examination on the same day as the patent was filed, however examination of an innovation patent cannot proceed until it has been granted. Subsequently the patent proceeded to grant on 20 December 2017, and the first of five examination reports issued on 1 February 2018. As of the fifth examination report the only remaining objection to the patent is that the claims are not for a manner of manufacture.
On 1 August 2018 the Patentee wrote to the Commissioner requesting to be heard in relation to the remaining objection.
After some preliminary correspondence between the Patentee and the Commissioner, the Commissioner wrote to the Patentee on 10 August 2018 indicating that the hearing would be conducted by way of written submissions due to be filed on 5 October 2018.
The Patentee filed several rounds of submissions on the following dates:
·    1 August 2018, as part of the request to be heard (“PS 01-08-18”)
·    9 August 2018 (“PS 09-08-18”)
·    24 August 2018 (“PS 24-08-18”)
·    29 August 2018, along with proposed amendments (“PS 29-08-18”)
·    30 August 2018, as part of a response to a letter from the Commissioner (“PS 30-08-18”); and
·    5 October 2018 (“PS 05-10-18”),

hereinafter collectively the “Patentee’s submissions”.

The Invention as Described

The patent deals with methods that broadly allow for the establishment of contractual obligations between generators, end users and service providers with respect to intellectual property, such as patents, thereby allowing for the creating and securing of intellectual property rights. In this regard the background section of the patent discusses how intellectual property rights “…typically are, expensive to define and…

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: Bellator Pty Ltd [2018] APO 93
Case: [2018] APO 93
Decision Date: 21 December 2018

CaseChat Overview and Summary

The case involved a patent application by Bellator Pty Ltd for an innovation patent titled "A method of innovation." The application was examined by the Australian Patent Office, and objections were raised regarding the patentability of the claims, specifically whether they constituted a "manner of manufacture" as required by Section 18(1A)(a) of the Patents Act 1990. The dispute was ultimately resolved in a decision dated 21 December 2018, where the delegate, Dr. W.E. Guinea, revoked the patent based on the conclusion that none of the claims were for a manner of manufacture.

The legal issues centered on the interpretation of the term "manner of manufacture" and whether the invention described in the patent application met the criteria for patentability. The court considered the statutory definition, relevant case law, and principles developed over time to determine whether the invention was a technical process or merely a business scheme. The court applied principles from previous cases such as NRDC, Grant, Research Affiliates, and RPL to analyze the substance of the invention.

The court's reasoning was that the claims and the overall description of the invention did not constitute a manner of manufacture because they outlined a business scheme rather than a technical process or invention. The invention, as described and claimed, involved an agreement between parties to provide innovation services in exchange for financial returns, which the court found to be a business model rather than a technical innovation. The inclusion of terms like "innovation" did not alter this conclusion, as the invention lacked the necessary physicality and tangible effects required for patentability.

Ultimately, the court found that the claims did not meet the criteria for a manner of manufacture and that there was no other subject matter within the patent that could be claimed to constitute a manner of manufacture. Consequently, the delegate revoked the patent. The court also dismissed the patent owner's arguments regarding the refund of the hearing fee and allegations of a denial of natural justice, finding that the examination process had been conducted in accordance with the prescribed timeframes and principles of natural justice.

Orders