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Global Blue S.A. v Visa U.S.A. Inc.

Global Blue S.A. v Visa U.S.A. Inc.

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Case Copied 30 November 2018 48 min read

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Global Blue S.A. v Visa U.S.A. Inc. [2018] APO 86

Patent Application: 2015201705

Title:Application currency code for dynamic currency conversion transactions with contactless consumer transaction payment device

Patent Applicant:                   Visa U.S.A. Inc.
Opponent:  Global Blue S.A.
Delegate:  Isaac Tan
Decision Date:  30 November 2018
Hearing Date:  11 September 2018 in Sydney, NSW

Catchwords: PATENTS – section 59 – fintech – computer implemented invention – card payment system – financial services – dynamic currency conversion (DCC) – EMV standard – request to withdraw application refused – application in a state of lapse – regulation 13.3 and section 223 considered – whether the Commissioner has any power to decide a lapsed application – statutory interpretation – read in light of the mischief the statute was designed to overcome and of the objects of the legislation – section 60 and regulation 5.20 indicates that there is no discretion – the Commissioner has the power to refuse an application that has lapsed or is in a state of lapse – lack of novelty and inventive step under section 18 established – lack of inventive step in light of common general knowledge alone established – costs awarded against the applicant – application refused

Representation: Applicant:
Phillips Ormonde Fitzpatrick (Previously Spruson & Ferguson)
Opponent:
Andrew Fox SC, Counsel for the Opponent
Jane Owen, Partner of Bird & Bird
Rebecca Currey, Senior Associate of Bird & Bird
Gavin Ingram, General Counsel Asia Pacific/VP Strategic Planning of Global Blue

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015201705

Title:Application currency code for dynamic currency conversion transactions with contactless consumer transaction payment device

Patent Applicant: Visa U.S.A. Inc.
Date of Decision: 30 November 2018
DECISION
The Opposition is successful. All of the Grounds have been made out.
I direct that the application be refused.
Costs awarded according to Schedule 8, against the Applicant.
REASONS FOR DECISION
Background

Australian patent application 2015201705 (application) was filed on 2 April 2015 in the name of Visa U.S.A. Inc. (Applicant) as a divisional of AU 2009279757 (‘757 application). The application claims a priority date of 4 August 2008 from international application PCT/US2009/052755 filed under the Patent Cooperation Treaty (PCT) with an international filing date of 4 August 2009. The application is one of a series of pending divisional applications AU 2017206203, AU 2018200622 and AU 2018200623.
In relation to the ‘757 application, a Notice of Acceptance was issued on 30 January 2015 which indicates that the ‘757 application had been accepted on 28 January 2015, and will be advertised in the Supplement to the Australian Official Journal of Patents (the journal) on 12 February 2015. On 11 May 2015, a Notice of Opposition was filed by Griffith Hack on behalf of Global Blue S.A. (Opponent). The Statement of Grounds and Particulars was filed on 11 August 2015, and Evidence in Support on 11 November 2015. On 19 January 2016, a request was filed to amend the Statement…

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

Case: [2018] APO 86
Decision Date: 30 November 2018

CaseChat Overview and Summary

Global Blue S.A. opposed a patent application filed by Visa U.S.A. Inc. The Opposition was successful and the application was refused. All grounds of opposition were found to be valid. The invention related to a transaction system for a consumer portable transaction payment device which allows consumers to make purchases or to obtain cash. The application was found to lack novelty and inventive step. The Commissioner found that the Commissioner has the power to decide a lapsed application under section 59 of the Patents Act 1990 (Cth). The Commissioner considered the purpose and intention of the Act and Regulations and found that it was Parliament's intention that the Commissioner could refuse an application that had lapsed or was in a state of lapse. Costs were awarded against the applicant.

Orders