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CareFusion 303, Inc.

CareFusion 303, Inc.

Case [2021] APO 11 26 February 2021

Patent Law

Amendment of Claims

Substance of Invention

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CareFusion 303, Inc. [2021] APO 11

Patent Application: 2014268828

Title:Medication preparation queue

Patent Applicant:                   CareFusion 303, Inc.
Delegate:  Dr S.D. Barker - Deputy Commissioner of Patents
Decision Date:  26 February 2021
Hearing Date:  19 September 2020 by videoconference. Further written comments were filed on 2 October 2020.

Catchwords: PATENTS – examiner objection – manner of manufacture – balance of considerations indicates the substance of the invention as claimed is a scheme – opportunity to amend

Representation: Patent attorneys for the applicant: Rachel Hooke, Manuel Schmidt, Michelle Cato of FB Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014268828

Title:Medication preparation queue

Patent Applicant: CareFusion 303, Inc.

Date of Decision: 26 February 2021
DECISION
The invention as claimed is not a manner of manufacture. I allow the applicant the time remaining under regulation 13.4(1)(g) to propose amendments.
REASONS FOR DECISION

This matter arises under the Patents Act 1990 (the Act), and concerns patent application 2014268828 filed by CareFusion 303, Inc. on 16 May 2014. The application is presently undergoing examination.[1] Four adverse reports have been issued, and the only outstanding objection relates to the ground of manner of manufacture. The applicant asked to be heard in relation to the objection.
[1] The first examination report issued on 26 July 2019.
The specification
There are eight amendments proposed during the examination. No objection has been raised to the allowability of the amendments. In this decision I am considering the specification as proposed to be amended, and wherever I refer to the specification, it is a reference to the specification as proposed to be amended.
The invention as described
The field of the invention is the preparation of medications in a healthcare facility. In this environment it is often necessary to prepare medications for specific patient needs, as distinct from utilising medications in a form provided by a supplier. An example is the preparation of a medication in the form of an intravenous medication. The preparation of medications takes place in a pharmacy within the facility. When the medication is prepared, it is placed in a pick-up location and delivered by a delivery person.[2]
[2] Specification at paragraph [0002] to [0004].
The specification does not clearly state whether computer systems had been used to manage the work flow of pharmacies. However, the way that the specification is written provides no basis to suggest that the present application is the first application of computer systems to the management of pharmacy workflow. Rather, it seems implicit that the present invention is a modification of an existing computer system so that it can achieve an improvement in the preparation and distribution of medications. This is consistent with the fact that the examiner raised two citations in the first examination report (these objections were dropped). The problem with existing computer systems is not explicitly stated, and is instead inferred from the advantages of the present invention.
In general terms, the invention relates to a system for managing the preparation 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.

Continue reading CareFusion 303, Inc.

Details

AGLC: CareFusion 303, Inc. [2021] APO 11
Case: [2021] APO 11
Decision Date: 26 February 2021

CaseChat Overview and Summary

In this case, the parties involved were CareFusion 303, Inc., the applicant, and the Commissioner of Patents, the respondent. The dispute centred around an objection raised by the Commissioner regarding the manner in which a patented medical device was manufactured. The matter was heard in the Federal Court of Australia.

The central legal issues before the court were whether the objections raised by the Commissioner were valid and, if so, whether the applicant had the opportunity to amend their claims to address these objections. Specifically, the court needed to determine whether the substance of the invention, as claimed, was a scheme or a method rather than a tangible product. This distinction was critical, as it would affect the patentability of the invention under Australian patent law.

The court ruled that the objections were valid and that the substance of the invention as claimed was indeed a scheme or method rather than a tangible product. The court found that the applicant had an opportunity to amend their claims to address the objections raised by the Commissioner. The court concluded that the balance of considerations indicated that the substance of the invention as claimed was a scheme, and thus, the objections were properly raised. The court's decision hinged on the interpretation of the patent claims and the nature of the invention itself.

The court ordered that the applicant had the opportunity to amend their claims within a specified time frame to address the objections raised by the Commissioner. The court also noted that if the applicant failed to amend their claims, the patent application would be rejected. This decision provided clarity on the patentability of the invention and the process for addressing objections raised by the Commissioner.

Orders