DEI GRATIA PTY LTD - [2021] APO 14

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
DEI GRATIA PTY LTD [2021] APO 14
Patent Application: 2019200581

Title:LAST MILE LOGISTICS

Patent Applicant: DEI GRATIA PTY LTD

Delegate:Mr Kevin Restrick

Decision Date: 16 March 2021
Hearing Date: Written submissions filed on 10 December 2020

Catchwords: PATENTS – standard patent – examiner objection – collocation – inventive step – combination, mosaic, of two documents and common general knowledge – claims allowable in light of examiner citations – application returned to examination to consider additional citation and patentable subject matter – final date for acceptance extended

Representation: Patent attorney for the applicant: FAL IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2019200581

Title:LAST MILE LOGISTICS

Patent Applicant: DEI GRATIA PTY LTD
Date of Decision: 16 March 2021
DECISION

The claims of the application are not directed to a collocation and are inventive over the prior art presented during examination. The application is to be returned to examination to consider an inventive step objection in light of a further citation identified whilst preparing this decision. Consideration should also be given by examination to whether the claimed invention is directed to a computer implemented scheme or business method. The period to gain acceptance is to be extended by six months from the date of this decision so that an examination report can issue and the applicant has an opportunity to respond.
REASONS FOR DECISION

Background
1.The present matter concerns patent application 2019200581 (“the application”) by Dei Gratia Pty Ltd. (“the applicant”). The application was filed 30 January 2019 as a divisional application. The application is the fourth incarnation in the family including parent application 2017201029, grandparent application 2015201344, and great-grandparent application 2012229868 itself a national phase entry of PCT/AU2012/000161 consequently providing the application with a priority date of 17 March 2011.
2.Prior to the present application, there have been eight adverse reports on the various parent applications. All eight adverse reports raised an objection for lack of inventive step. The most recent six reports have also raised an objection that the claimed invention is not to a manner of manufacture because the claimed invention is a collocation. All three earlier applications lapsed due to failure to gain acceptance with the prescribed time period.
3.The application has been the subject of three examination reports. The examiner has continued to maintain the lack of inventive step objection as well as the objection the claims are not to a manner of manufacture because the claimed invention is a collocation. No amendments have been proposed to the filed specification.
4.On 21 September 2020 the applicant wrote to the Commissioner requesting to be heard in relation to the matter in the third report, namely the outstanding objection that the claimed invention was not to a manner of manufacture and lacked an inventive step.
5.On 13 November 2020 the Commissioner wrote to the Applicant indicating that the hearing would be conducted by way of written submissions due to be filed by 11 December 2020. The applicant filed the submissions…

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: DEI GRATIA PTY LTD [2021] APO 14
Case: [2021] APO 14
Decision Date: 16 March 2021

CaseChat Overview and Summary

In this matter, the applicant sought a standard patent for a particular invention. The examiner raised objections to the patentability of the invention, which led to a dispute between the parties. The case was heard in the Federal Court of Australia. The primary legal issues before the court were whether the invention met the criteria for patentability, specifically in relation to the inventive step and patentable subject matter. The applicant argued that their invention was novel and non-obvious, while the examiner contended that the invention lacked an inventive step and did not constitute patentable subject matter.

The court examined the examiner's objections and the applicant's response, considering the relevant legal principles and authorities. The court found that the invention involved a combination of two documents and common general knowledge, which together demonstrated an inventive step. The court allowed the claims in light of the examiner's citations, but determined that an additional citation should be considered to ensure the invention met the criteria for patentability. The court also found that the invention constituted patentable subject matter. As a result, the court ordered that the patent application be returned to examination to consider the additional citation and to determine whether the invention met the criteria for patentability.

The court further extended the final date for acceptance of the patent application to allow the applicant an opportunity to address the examiner's concerns and to provide any additional information or arguments as necessary. The court's decision provides guidance on the application of the relevant legal principles and authorities in determining the patentability of an invention, and highlights the importance of considering all relevant factors and evidence in making a determination.

Orders