Gilbarco Inc - [2020] APO 26

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Gilbarco Inc [2020] APO 26

Patent Application: 2014342209

Title:Crytographic watermarking of content in fuel dispensing environments

Patent Applicant: Gilbarco Inc

Delegate: O L Haggar

Decision Date: 4 June 2020

Hearing Date: Written submissions filed on 24 September 2019

Catchwords: PATENTS – examiner’s objections – computer implemented invention – use of watermarking to authenticate content during rendering – substance of the claimed invention provides the technical advantage of allowing authentication and rendering to be performed simultaneously – claimed invention is a manner of manufacture – claimed invention not naturally suggested by the prior art – claimed invention involves an inventive step – application to proceed to acceptance

Representation: Patent attorney for the applicant: FB Rice Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2014342209

Title:Cryptographic watermarking of content in fuel dispensing environments

Patent Applicant: Gilbarco Inc

Date of Decision: 4 June 2020

DECISION

I allow the amendments proposed to the specification on 18 January 2019. The grounds of objection raised by the examiner cannot be maintained. As there are no other objections outstanding, I direct that the application proceed to acceptance.

INTRODUCTION

Patent application 2014342209 (the present application) was filed by Gilbarco Inc (the applicant) on 30 October 2014 under the provisions of the Patent Cooperation Treaty as international application PCT/US2014/063165 claiming priority from US application 61/897368 filed on 30 October 2013.

The present application was filed after 15 April 2013. The fate of the present application is as a consequence governed by the Patents Act 1990 (the Act) as amended by the IntellectualProperty Laws Amendment (Raising the Bar) Act 2012. These amendments included the introduction of new section 49(1). Under this provision, I must accept the present application if satisfied on the balance of probabilities that it complies with the requirements of the Act. If I am not so satisfied, I can refuse the present application.

A first examination report was issued on 10 July 2018 raising objections in relation to manner of manufacture and inventive step. The objection relating to inventive step was primarily based on the disclosure of US application 2010/0027837 (the Levy application). The applicant responded to the first examination report on 18 January 2019 by way of written submissions and proposed amendments to the specification.

A second examination report was issued on 11 February 2019 maintaining the objection relating to manner of manufacture, but not the objection relating to inventive step. The applicant responded to the second examination report on 19 June 2019 via written submissions alone.

A third examination report was issued on 10 July 2019 again maintaining the objection relating to manner of manufacture. The third report additionally re-introduced the objection relating to inventive step on the basis of the Levy application.

The applicant requested and was given an opportunity to be heard on the examiner’s objections by way of written submissions. The applicant duly filed its written submissions on 24 September 2019.

In accordance with regulation 13.4(1)(g), when the Commissioner…

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.

Keep reading for free

Create a free CaseChat account to read Gilbarco Inc and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2020] APO 26
Decision Date: 4 June 2020

CaseChat Overview and Summary

The case involved a dispute between Gilbarco Inc and the Commissioner of Patents, focusing on objections raised by the examiner concerning a patent application for a computer-implemented invention. The invention involved the use of watermarking to authenticate content during rendering. The matter was heard and determined in the Federal Court of Australia. The central legal issue before the court was whether the claimed invention met the criteria for patentability, specifically whether it was a manner of manufacture, involved an inventive step, and was not naturally suggested by the prior art. The court had to determine whether the examiner's objections were justified and whether the application should proceed to acceptance.

The court examined the substance of the claimed invention and found that it provided the technical advantage of allowing authentication and rendering to be performed simultaneously, which was not naturally suggested by the prior art. The court held that the invention was indeed a manner of manufacture and involved an inventive step. The court further found that the claimed invention was not naturally suggested by the prior art and was therefore patentable. Consequently, the court ruled that the examiner's objections were unfounded and that the application should proceed to acceptance.

The court's reasoning was grounded in established principles of patent law, which require that an invention be a manner of manufacture, involve an inventive step, and not be naturally suggested by the prior art. The court found that the claimed invention met all these criteria, and therefore the examiner's objections were without merit. As a result, the court ordered that the application proceed to acceptance, paving the way for the patent to be granted. This decision reinforces the importance of demonstrating the inventive step and technical advantage of an invention to overcome objections and secure patent protection.

Orders