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Elot, Inc.

Elot, Inc.

Case [2017] APO 55 7 November 2017

Patent Law

Manner of Manufacture

Computer Implemented Inventions

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Elot, Inc.[2017] APO 55

Patent:2002236547

Title:A system and a method for operating on-line state lottery games

Patentee:  Elot, Inc.
Delegate:  Dr V. Z. Kolev
Decision Date:  7 November 2017
Hearing Date:  Written submissions filed on 7 June 2017

Catchwords: PATENTS – hearing with respect to Examiner’s objection during re-examination – whether the claimed invention is a manner of manufacture – governmental lottery play over an electronic network – networked computer system – approach to determining the substance of the claimed invention – the substance of the invention is in the specific rules governing the information receiving, generation, recording, and exchange between the levels in a known three-level lottery system to facilitate the governmental lottery play – the claimed invention is not a manner of manufacture – patent revoked

Representation: Patent attorney for the Patentee: FPA Patent Attorneys Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2002236547

Title:A system and a method for operating on-line state lottery games

Patentee: Elot, Inc.
Date of Decision: 7 November 2017
DECISION
The invention claimed in all of the claims is not a manner of manufacture. Having reviewed the specification, I do not consider it appropriate to provide an opportunity to amend as, in the circumstances of the case, it will serve no useful purpose. I revoke Australian patent 2002236547.
REASONS FOR DECISION

Throughout this decision, unless explicitly stated otherwise, any reference to an Act or a section, subsection, etc. of an Act refers to the Patents Act 1990 (the Act), and any reference to Regulations or a specific regulation refers to the Patents Regulations 1991 (the Regulations).
Background
The matter relates to Australian patent 2002236547 (the Patent) in the name of Elot, Inc. (the Patentee). The Patent was granted on 25 October 2007. Prior to the grant of the Patent, a divisional application 2007221934 (the Divisional Application) was filed on 10 October 2007.
The Divisional Application
The Divisional Application was accepted on 18 March 2009 and subsequently opposed by Jumbo Interactive Ltd and by New South Wales Lotteries Corp on multiple grounds including that the claimed invention is not a manner of manufacture.
The matter was heard and on 28 October 2011 a Delegate issued the decision Jumbo Interactive Ltd & New South Wales Lotteries Corp v Elot, Inc. [2011] APO 82 (the Original Decision, or OD) stating that “[t]he oppositions are successful on the ground that the claims do not define a manner of manufacture”. All other grounds were found unsuccessful. In addition, the Delegate noted:
“While I am unsure whether there is patentable subject matter in the specification, I allow Elot, Inc 60 days from the date of this decision to propose suitable amendments.”
On 3 January 2012, the Patentee (in their capacity of the Applicant for the Divisional Application) proposed amendments and filed supporting submissions in an attempt to overcome the Delegate’s finding in the Original Decision. The amendments were allowed on 13 August 2012 and the matter was…

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: Elot, Inc. [2017] APO 55
Case: [2017] APO 55
Decision Date: 7 November 2017

CaseChat Overview and Summary

The present case relates to Australian patent 2002236547 for a system and method for operating on-line state lottery games. The matter was referred to the Delegate by the Commissioner of Patents for consideration of whether the claimed invention is a manner of manufacture. The Delegate found that the invention defined in all claims of the Patent is not a manner of manufacture. Having reviewed the specification, the Delegate did not consider it appropriate to provide an opportunity to amend as, in the circumstances of the case, it will serve no useful purpose. The Delegate revoked Australian patent 2002236547.

The central legal issue in this case was whether the claimed invention is a manner of manufacture. In this regard, the Delegate considered the substance of the claimed invention and found that the claimed invention was in the specific rules governing the information receiving, generation, recording, and exchange between the levels in a known three-level lottery system for facilitating governmental lottery play. The Delegate concluded that this is nothing more than a mere scheme, which is not a manner of manufacture. The Delegate further found that the claimed invention does not involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. The invention merely requires generic computer implementation and the computer system is merely a known intermediary or tool for performing the invention while adding nothing of substance to the idea upon which the invention is built.

The Delegate concluded that the invention defined in all claims of the Patent is not a manner of manufacture and therefore revoked the patent. The Delegate did not consider it appropriate to provide an opportunity to amend as, in the circumstances of the case, it would serve no useful purpose.

Orders