Legal Research
Cases
Discovery Holdings Limited

Discovery Holdings Limited

Case [2011] APO 56 9 August 2011

Patent Law

Inventive Step

Manner of Manufacture

Business Method Patents

Intellectual Property Law

No judgment structure available for this case.

Type to search within this case.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Discovery Holdings Limited [2011] APO 56
Patent Application: 2007257547

Title:A method of managing a life insurance plan and a system therefor

Patent Applicant:  Discovery Holdings Limited
Delegate:  Ed Knock
Decision Date:  9 August 2011
Hearing Date:  Written submissions filed on     31 May 2011
Catchwords:  PATENTS – examiner objection – insurance scheme – life insurance plan which also includes insurance coverage for the parents of the person whose life is insured – business scheme – whether a manner of manufacture – no “physical phenomenon or effect” - whether an inventive step involved – all claims lack an inventive step – application refused

Representation: Patent applicant: Matthew Ward of Shelston IP, Sydney

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007257547

Title:A method of managing a life insurance plan and a system therefor

Patent Applicant: Discovery Holdings Limited
Date of Decision: 9 August 2011
DECISION
The invention defined by claims 1 to 10 is not a manner of manufacture and thus does not meet the requirements of paragraph 18(1)(a) of the Patents Act. As well, the invention defined by claims 1 to 10 does not involve an inventive step and thus does not meet the requirements of subparagraph 18(1)(b)(ii) of the Patents Act.
Furthermore I am unaware of anything disclosed in the specification which is capable of meeting the requirements referred to in the preceding paragraph.
I refuse the application.
REASONS FOR DECISION
This matter concerns examiner’s objections and whether I should exercise the Commissioner’s power to refuse the application under subsection 49(2) of the Patents Act 1990.
Background

Application 2007257547 was filed under the provisions of the Patent Cooperation Treaty on 23 May 2007 as application PCT/IB2007/051947. Australia was among its designations, and it was allocated Australian application number 2007257547. It claimed priority from South African patent application 2006/04673 filed on 7 June 2006. International publication of the PCT application took place on 13 December 2007, the application being accorded the International Publication Number WO 2007/141697. The application did not undergo international preliminary examination under the PCT, and entered the national phase of processing in Australia on 9 December 2008.
The first of a total of four examination reports on this application was issued on 28 April 2010. The final date for acceptance of this application is thus 28 January 2012. In response to the first report the applicant filed fairly extensive submissions and a statement of proposed amendments, inter alia substituting a new set of claims. There have been no further amendments proposed to this application.
The examiner was not persuaded by these and subsequent submissions that the amendments had satisfactorily addressed the deficiencies in the application, and issued second, third and fourth reports. In the third report, the examiner offered the applicant a hearing, but this offer was not taken up. The fourth report went further and indicated the intention of the Commissioner to set the matter for a hearing. This was duly done, with the date for the hearing set at 1 June 2011.…

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 Discovery Holdings Limited

Details

AGLC: Discovery Holdings Limited [2011] APO 56
Case: [2011] APO 56
Decision Date: 9 August 2011

CaseChat Overview and Summary

Discovery Holdings Limited has had its patent application for a method of managing a life insurance plan rejected by the Australian Patent Office. The application was examined on two grounds: whether it was a manner of manufacture, and whether it involved an inventive step. The decision was made by Delegate Ed Knock. The applicant had filed a patent application for a computer implemented method of managing a life insurance plan, which involved paying out a predetermined amount to the insured life on occurrence of an insured event to the insured life or to a parent of the insured life. The applicant argued that the method was a manner of manufacture as it resulted in a "concrete, tangible, physical and observable effect". However, the examiner and the Delegate found that the method was a mere scheme or plan and did not result in a physical effect. The Delegate found that the payment of a predetermined amount was a transfer of ownership of pre-existent funds and not the creation of anything physical. The Delegate also found that the method did not involve an inventive step as it would have been obvious to a person skilled in the art to include parents in an insurance plan. The Delegate found that the state of the common general knowledge included the concept of insuring one's parents and the possibilities and advantages of combined coverage of different entities. The Delegate concluded that the claims were not directed to a manner of manufacture and did not involve an inventive step. The application was refused.

Orders