BGC Partners, Inc. - [2018] APO 27

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
BGC Partners, Inc. [2018] APO 27

Patent Application: 2016204442

Title:System for Automatically Distributing a Trading Order over a Range of Prices

Patent Applicant:                   BGC Partners, Inc.
Delegate:  Greg Powell
Decision Date:  23 April 2018
Hearing Date:  Written submissions filed on 6 October 2017

Catchwords: PATENTS – examiner’s objections – system and method for trading – business scheme – no technical contribution in implementation – divisional application filed – application refused.

Representation: Patent attorney for the applicant: Pizzeys Patent and Trade Mark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016204442

Title:System for Automatically Distributing a Trading Order over a Range of Prices

Patent Applicant: BGC Partners, Inc.
Date of Decision: 23 April 2018
DECISION
The claimed invention, as proposed to be amended is not for a manner of manufacture.
The applicant has filed a divisional application having the same specification. In the public interest, I refuse the application.
REASONS FOR DECISION
Background

BGC Partners, Inc (the applicant) filed patent application 2016204442 (the application) on 28 June 2016. The application is a divisional application based on parent application 2012247060 (the parent). That parent is, itself, a divisional of 2006251674 (the grandparent) which was based on a US application 11/133,767. The earliest claimed priority date is 20 May 2005.
The application was subjected to two examination reports dated 7 September 2016 and 2 August 2017. Following the second report, the applicant requested to be heard. The reports repeated a manner of manufacture objection that had been taken against the parent and grandparent.
In response to the request to be heard, the applicant was invited to provide written submissions. In response, the applicant provided submissions and also proposed amendments to the claims.
The examination of the present application is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act – the application was filed after 15 April 2013.
Specification
The specification states that the invention relates generally to trading markets and, more particularly, to a system for automatically distributing a trading order over a range of prices.

The specification notes that electronic trading systems are widely accepted as a means to trade items. The specification notes financial instruments such as stocks, bonds, currency, futures, or the like as examples. The specification notes that, in some markets, electronic trading is the norm and there is very little, if any, human interaction. In such markets, where trading between computers may happen around the globe 24 hours a day, a “market maker” may supply bid-offer spreads to multiple trading systems to flood the general marketplace to make money from the very large volume of trades executed on their prices. The specification notes that…

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 BGC Partners, Inc.

Details

AGLC: BGC Partners, Inc. [2018] APO 27
Case: [2018] APO 27
Decision Date: 23 April 2018

CaseChat Overview and Summary

The applicant filed patent application 2016204442 (the application) on 28 June 2016. The application was subjected to two examination reports dated 7 September 2016 and 2 August 2017. Following the second report, the applicant requested to be heard. The examiner objected that the present application was not for a manner of manufacture. In response, the applicant proposed amendments to the claims. The examiner rejected the amendments. The court found that the substance of the invention was a mere scheme which did not provide a technical contribution to the art. Moreover, there was no technical effect in the implementation of the scheme that would make the requisite technical contribution. An invention that did not provide a technical contribution to the art could not be an invention that was a manner of manufacture under s 18(1)(a). The application was refused.

Orders