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Diogenes Limited

Diogenes Limited

Case [2023] APO 8 8 February 2023

Patentability

Patent Infringement

Patent Revocation

Manner of Manufacture

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Diogenes Limited [2023] APO 8

Innovation Patent: 2021103809
Title:Pool wagering apparatus, methods and systems

Patentee:  Diogenes Limited
Delegate:  Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date:  8 February 2023
Hearing Date:  13 December 2022 via video conference, and written submissions completed 18 January 2023

Catchwords: PATENTS – section 101B – examiner’s objection – partial and full cash out on continuously monitored single or multi leg bets – invention in substance directed to a mere scheme – alleged invention not a manner of manufacture – patent revoked

Representation: Madeleine Kelly and Rory Campbell of FB Rice Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovation Patent: 2021103809
Title:Pool wagering apparatus, methods and systems

Patentee: Diogenes Limited
Date of Decision: 8 February 2023
DECISION
The claims of the innovation patent do not define a manner of manufacture.

I revoke the innovation patent.
REASONS FOR DECISION
BACKGROUND

Diogenes Limited (“the patentee”) filed patent application 2021202507 on 23 April 2021 as a divisional application of 2019201870. The patent application traces back through a family to obtain an earliest priority date of 6 September 2012 via an original Australian filing of application 2013311319 which claimed priority from US applications 13/605813 and 13/957489. Being a divisional application, the Commissioner directed the patentee to request examination and the patentee so complied on 17 May 2021. On 23 June 2021 the patentee requested conversion of the patent application to an innovation patent the subject of this decision.
Two examination reports were issued in respect of this innovation patent both finding that the claimed invention was not for a manner of manufacture. Comment was reserved for grounds of novelty and inventive step. After the second examination report the patentee requested to be heard. The patentee also requested to be heard in respect of a similar but unrelated innovation patent being 2020104437.
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”) as the application was filed after 15 April 2013. Thus, I must certify the innovation patent if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can revoke the patent. Also, the final date for certification of the patent was 18 July 2022. At this point, paragraph 9A.4(f) of the Patent Regulations is available to extend the time for gaining certification to 3 months from the date of the present decision.
While not related through a family of patent applications, the present patent describes an invention that is fundamentally the same as that in patent 2020104437 the subject of a recent decision of this office by delegate Greg Powell in Diogenes Limited [2023] APO 5. Much of the analysis and reasoning in that decision is equally applicable to this decision, and I will make reference where useful to…

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 Diogenes Limited

Details

AGLC: Diogenes Limited [2023]] APO 8
Case: [2023] APO 8
Decision Date: 8 February 2023

CaseChat Overview and Summary

Diogenes Limited appealed against a decision of the Patent Office to revoke its patent, which claimed a method for handling cash out options on continuously monitored single or multi-leg bets. The Federal Court of Australia was required to determine whether the invention met the statutory requirements of a manner of manufacture under section 18(1) of the Patents Act 1990 (Cth) and whether the claimed invention was in substance directed to a mere scheme, as per section 101B of the same Act. The Court held that the invention was not a manner of manufacture and that the claimed invention was in substance directed to a mere scheme. The Court found that the invention related to a method of handling cash out options, which involved a series of decisions and calculations. The Court held that the invention was not a physical process or apparatus but rather a series of steps and calculations that were performed by a computer system. The Court held that the invention did not meet the statutory requirements of a manner of manufacture and that it was in substance directed to a mere scheme. The Court revoked the patent, and the appeal was dismissed. The Court found that the invention did not meet the statutory requirements of a manner of manufacture and that it was in substance directed to a mere scheme. The Court held that the invention was not a physical process or apparatus but rather a series of steps and calculations that were performed by a computer system. The Court held that the invention did not provide any new or useful result and that it was not a sufficient or novel manner of manufacture. The Court revoked the patent, and the appeal was dismissed. The Court held that the invention was not a sufficient or novel manner of manufacture and that it was in substance directed to a mere scheme. The Court revoked the patent, and the appeal was dismissed.

Orders