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Discovery Life Limited

Discovery Life Limited

Case [2017] APO 36 18 July 2017

Patentable Subject Matter

Manner of Manufacture

Inventive Step

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Discovery Life Limited [2017] APO 36

Patent Application: 2016203283

Title:Method of managing a life insurance policy with a related medical scheme

Patent Applicant:  Discovery Life Limited
Delegate:  R Subbarayan
Decision Date:  18 July 2017
Hearing Date:  Written record

Catchwords: PATENTS - examiner’s objections – computer implemented method for of managing a life insurance policy with a related medical scheme – abstract idea or mere scheme – no patentable subject matter disclosed – application refused.

Representation: Patent attorney for the applicant: Shelston IP Pty Ltd.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016203283

Title:Method of managing a life insurance policy with a related medical scheme

Patent Applicant: Discovery Life Limited
Date of Decision: 18 July 2017
DECISION
The subject matter of patent application 2016203283 is not a manner of manufacture. Consequently the application is refused pursuant to subsection 49(2) of the Patents Act.
REASONS FOR DECISION
BACKGROUND

Patent application 2016203283 in the name of Discovery Life Limited was filed on 20 May 2016. This application is a divisional application of 2012227307 which is a divisional application of 2012201469 which is a divisional application of 2011221367 which in turn is a divisional application of 2005201351. The earliest priority date for the present application is 16 April 2004.
Parent application 2012227307 lapsed due to failure to overcome the examiner’s objections and gain acceptance within the prescribed period. The examiner had rejected the application on the grounds that the claimed invention was not directed to a manner of manufacture and that it lacked an inventive step.
The applicant requested examination of the present application on 19 July 2016 and a first report was issued on 27 March 2017. As the claims of the present application are substantially the same as claims that had been rejected in the parent application, the examiner rejected the application on the same grounds of not being a manner of manufacture and lack of inventive step. The examiner adopting IP Australia’s Divisional Case Management practice also advised the applicant as follows:
My report below includes objections that are equivalent to objections raised in the examination of the related parent application which is directed to the same or essentially the same subject matter. As there has now been several adverse reports in relation to this subject matter, the application will be referred to a Hearing Officer to consider whether to accept or refuse the application under s49 or to direct amendment under s107. If you wish to be heard on this matter, you have 1 month from the date of this report to request a hearing. Fee item 230 applies.
The applicant however did not request to be heard. It rather filed a further divisional application number 2017202748 with exactly the same set of claims. As noted by the then Deputy Commissioner of Patents in Swiss Reinsurance Company Limited [2017] APO 12, this is “a course of action that, although permitted under the Act, does nothing for the reputation of the patent system and…

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 Life Limited

Details

AGLC: Discovery Life Limited [2017] APO 36
Case: [2017] APO 36
Decision Date: 18 July 2017

CaseChat Overview and Summary

The case involves a patent application submitted by Discovery Life Limited for a method of managing a life insurance policy with a related medical scheme. The application was filed on 20 May 2016 and is a divisional application of 2012227307, which in turn is a divisional application of 2012201469, which is a divisional application of 2011221367, which is a divisional application of 2005201351. The earliest priority date for the present application is 16 April 2004. The applicant did not request to be heard and filed a further divisional application with exactly the same set of claims. The decision is based on the written record for this application, its parent application AU2012227307 and its great great grandparent application AU2005201351.

The court had to decide whether the claimed invention was a manner of manufacture and whether it involved an inventive step. The examiner rejected the application on the grounds that the claimed invention was not directed to a manner of manufacture and that it lacked an inventive step. The applicant argued that the claimed invention involved the integration of two independent information systems and that the substance of the invention was the integration of these two systems. The applicant also argued that the claimed invention involved an inventive step.

The court found that the claimed invention was not a manner of manufacture as it was a business innovation, a mere scheme. The court also found that the claimed invention lacked an inventive step as it could be derived from the prior art. The court agreed with the examiner's objection and found that the application should be refused.

The final orders of the court were that the application be refused pursuant to subsection 49(2) of the Patents Act. The applicant has the right to appeal the decision to the Federal Court of Australia within one month from the date of the decision.

Orders