Crown Melbourne Limited - [2020] APO 47

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Crown Melbourne Limited [2020] APO 47

Patent Application: 2018219972

Title:METHOD AND APPARATUS FOR ROULETTE GAME

Patent Applicant:                   Crown Melbourne Limited
Delegate:  R Subbarayan
Decision Date:  16 October 2020
Hearing Date:  Written submissions filed on 17 June 2020

Catchwords: PATENTS – Examiner’s objection – whether claims are to a manner of manufacture – layout of numbered wagering spaces on the roulette table – whether serves a mechanical or other technical purpose – scheme for increased take-up of game and increased betting options – not a manner of manufacture – application refused

Representation: Patent attorney for the applicant: Pini IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018219972

Title:METHOD AND APPARATUS FOR ROULETTE GAME

Patent Applicant: Crown Melbourne Limited
Date of Decision: 16 October 2020
DECISION
Claimed invention is not for a manner of manufacture. The application is refused.
REASONS FOR DECISION
BACKGROUND

Patent application 2018219972 in the name of Crown Melbourne Limited (the Applicant) was filed on 20 August 2018 as a divisional application of 2016210666 which is in turn a divisional of grandparent 2008203384. As a consequence, the present applicant claims an earliest priority date of 25 July 2008, being the filing date of grandparent 2008203384. I also note that the applicant filed an innovation patent 2008100694 on 25 July 2008 for what appears to be the same invention. This innovation patent was advertised on 19 February 2009 as having been examined and certified and has now expired after running its full term. However, neither the parent nor the grandparent applications were accepted, both having lapsed due to failure to overcome the examiner’s objection within the period to gain acceptance. I also observe that application 2020204279 was filed on 26 June 2020 as a divisional of the present application.
Examination of the present application was requested on 26 October 2018 and a first examination report was issued on 27 June 2019. The sole objection in that report (which was also present in the reports for 2016210666 and 2008203384) was that all the claims were not for a manner of manufacture. The applicant filed a letter on 2 June 2020 requesting to be heard in relation to this sole objection on the basis of written submissions. They then filed their written submissions on 17 June 2020. On the same day, they also filed a set of proposed amendments which have not yet been considered by the examining section. I will consider these amendments as part of my decision.
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 20 August 2018, the amended provisions of the Act and Regulations apply to the examination of the Application and to the instant hearing. This means that if I am satisfied, on the balance of probabilities, that a ground of objection exists, I can refuse the Application. However, I will only refuse the Application if…

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: Crown Melbourne Limited [2020] APO 47
Case: [2020] APO 47
Decision Date: 16 October 2020

CaseChat Overview and Summary

The case involved Crown Melbourne Limited, the applicant, in an objection raised by the Examiner of Patents regarding a patent application for a specific layout of numbered wagering spaces on a roulette table. The objection was centred on whether the claims of the application related to a manner of manufacture and whether the layout served a mechanical or other technical purpose. The dispute was adjudicated in the Federal Court of Australia.

The primary legal issue for the court was to determine if the claims in the patent application related to a manner of manufacture, as required by the Australian Patents Act. The court had to assess whether the layout of the numbered wagering spaces on the roulette table served a mechanical or other technical purpose, and if the scheme for increased take-up of the game and increased betting options could be considered a manner of manufacture. The court needed to decide whether the layout provided a technical advantage or if it was merely an organisational or business strategy.

The court ruled that the layout of the numbered wagering spaces on the roulette table did not serve a mechanical or other technical purpose. The scheme for increased take-up of the game and increased betting options was not a manner of manufacture as it did not relate to the creation of an article or provide a technical advantage. Consequently, the court concluded that the application did not meet the requirements of the Australian Patents Act, and the objection raised by the Examiner was upheld. The patent application was refused.

Orders