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Diogenes Limited

Diogenes Limited

Case [2023] APO 5 1 February 2023

Patentability

Computer-implemented inventions

Manner of manufacture

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Diogenes Limited [2023] APO 5

Innovation Patent: 2020104437

Title:Wagering apparatus, methods and systems

Patentee:Diogenes Limited

Delegate:Greg Powell
Decision Date: 1 February 2023
Hearing Date: 8 December 2022, by Video Conference

Catchwords: PATENTS – examiner objections – whether claims are for a manner of manufacture – substance of the invention is a scheme for offering partial or full buy-outs to players participating in a wagering event – claims are not for a manner of manufacture – nothing could be added to the claims that would avoid this finding – patent revoked

Representation: Patent attorney for the applicant: Madeleine Kelly and Rory Campbell of FB Rice Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Innovation Patent: 2020104437

Title:Wagering apparatus, methods and systems

Patentee:Diogenes Limited

Date of Decision: 1 February 2023

DECISION

The claims of the patent, as proposed to be amended, do not define a manner of manufacture.
I do not see any subject matter in the body of the specification from which valid claims could be drafted to overcome this finding.
I revoke the patent.
REASONS FOR DECISION

BACKGROUND

Patent application 2020104437 (the present application) was filed by Diogenes Ltd (the applicant) on 6 August 2020 as a complete application for a standard patent (original application number 2020213361). It was filed as a divisional application of patent application 2018204446 (the parent application – which lapsed after not gaining acceptance). On 23 June 2021, the applicant requested that the complete application for a standard patent be converted to a complete application for an innovation patent. This request was granted on 2 July 2021. Following a formalities check and acceptance, a patent was granted on 28 July 2021. Notwithstanding that this is a granted patent, I will refer to it as an application during this decision.
The parent application is a divisional application of patent application 2015242951 (the grandparent application – which lapsed after not gaining acceptance). The grandparent application is a divisional of patent application 2013333573 (the great-grandparent application). Ultimately, the present application claims priority from US applications 13/605813 filed on 6 September 2012 and 13/958028 filed on 2 August 2013.
The present application was filed after 15 April 2013. The present application is therefore governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Under section 101E of the Act, if I am satisfied on the balance of probabilities that the application complies with the requirements of the Act, I must notify the patentee that the application has been examined and that a certificate of examination is to be issued. If I am not so satisfied, I can revoke the present application under section 101F.
A first examination report was issued on 16 December 2021 raising objections in relation to manner of manufacture and novelty. The applicant responded to the first examination report on 28 February 2022 by way of written submissions and proposed…

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 5
Case: [2023] APO 5
Decision Date: 1 February 2023

CaseChat Overview and Summary

Diogenes Limited sought to protect a wagering apparatus, methods and systems patent through an innovation patent application. The application was initially filed as a standard patent application, but was later converted to an innovation patent application. The invention is described as a wagering apparatus for allowing a placement of a wager on a wagering event. The invention allows a player to make a selection of results in a variety of different and discrete events, and then, if the player correctly selects the results that occur, they have the opportunity to share in the pool of the stakes of all the other players, with amounts covering operating costs and/or operator profit being removed from the pool. The invention is differentiated from prior art by the concept that, after the player has placed their wager, a "buy-out" offer is made to those players who have correctly selected the results so far and could still win the jackpot. This buy-out offer is, in effect, an offer for the player to sell their ticket(s) back to the game operator, or other entity, at a price that could be the full jackpot value of the ticket, but is not usually the full jackpot amount, but is, nevertheless, more than what they paid for the bet. The invention also includes a "partial buy-out offer" which is an amount offered to the player for their ticket which, if they accept, allows them to remain in the game such that, if they are then successful in the remaining legs, they share in the jackpot prize, but they receive less of the jackpot pool that they would have received if they did not accept the partial buy-out offer. The court was required to determine whether the claims were for a manner of manufacture. The court found that the claims were not for a manner of manufacture. The substance of the invention was a scheme for offering partial or full buy-outs to players participating in a wagering event. The court found that nothing could be added to the claims that would avoid this finding. The court revoked the patent.

Orders