Patent Applicant:                   Facebook, Inc.
Delegate:  K. Wagg
Decision Date:  21 April 2020
Hearing Date:  21 November 2018, further submissions filed on 5 December 2018 and 30 January 2019.

Catchwords: PATENTS – examiner objection – manner of manufacture – conversion tracking is an outcome enabled by the substance – substance of the invention – technical limitations in the architecture of apps have been overcome – allowability of the amendments to be considered by the examining section.

Counsel for the Applicant: Julian S. Cooke
Patent Attorney for the
Applicant:Paul J. Mahony of Cotters Patent and Trademark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014209546

Titles:Conversion tracking for installation of applications on mobile devices

Patent Applicant: Facebook, Inc.
Date of Decision: 21 April 2020
DECISION
I find that the manner of manufacture objection cannot be maintained in view of the proposed amendments. Furthermore, I direct the specification return to the examination section for examination of the amendments. The application has 3 months from the date of this decision to be accepted.
REASONS FOR DECISION
Background

Patent application number 2014209546 was filed by Facebook, Inc. on 22 January 2014. The earliest priority date claimed is 23 January 2013 based on US application 13/748,560.
The applicant requested expedited examination under the Global Patent Prosecution Highway on 31 August 2017 and sought leave to amend the specification. Consequently, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to this case, including that the Commissioner must accept a patent request and specification if she is satisfied, on the balance of probabilities, that it meets the requirements of s 49. If she is not satisfied, then she may refuse the application.
A delegate of the Commissioner of Patents issued the First Examination Report on 7 September 2017. In that examination report, the examiner raised two objections: that the claims do not define a manner of manufacture; and that the claims do not involve an inventive step. The applicant responded with arguments and the Examiner maintained the objections in the second examination report of 31 January 2018. The applicant again responded with arguments. Then in the third report dated 14 May 2018, the examiner only maintained the objection that the claims failed to define a manner of manufacture. After a further response from the applicant and a fourth examination report, dated 8 August 2018, was issued maintaining the sole objection of manner of manufacture, the applicant filed a request to be heard on 23 August 2018. The applicant requested leave to amend the specification on 14 November 2018 and it was agreed that these would be considered at the hearing. A hearing was held in Sydney on 21 November 2018.
At the hearing, the Rokt cases[1] were discussed, and I allowed the applicant further time to file submissions in relation to them. The Federal court…

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 Facebook, Inc.

Details

AGLC: Facebook, Inc. [2020] APO 19
Case: [2020] APO 19
Decision Date: 21 April 2020

CaseChat Overview and Summary

The case involves a patent application filed by Facebook, Inc. for a method of conversion tracking for the installation of applications on mobile devices. The application was objected to by the examiner on the basis that it lacked a manner of manufacture. The applicant sought leave to amend the claims and specification, and a hearing was held to determine the allowability of the amendments and the objections raised. The court found that the objections could not be maintained in view of the proposed amendments. The court found that the substance of the invention was a technical improvement in the functioning of the device, which allowed for the communication of information about the installation of a native application to an online system. The invention solved a technical problem within the computer and resulted in an improvement in the functioning of the mobile device. The court also found that the proposed amendments did not merely require generic computer implementation and did not involve a mere scheme or business method. The court allowed the applicant 3 months from the date of the decision to be accepted and directed the specification return to the examination section for examination of the amendments.

The legal issues in the case were whether the proposed amendments to the patent application met the requirements of the Patents Act, specifically whether they involved a manner of manufacture and whether they were novel and inventive over the prior art. The court considered the relevant legal principles and authorities on the issue of manner of manufacture and found that the proposed amendments did meet the requirements of the Patents Act. The court also considered the submissions made by the applicant and the examiner on the issue of inventiveness and found that the proposed amendments were not obvious in view of the prior art. The court concluded that the objections raised by the examiner could not be maintained in view of the proposed amendments.

Orders