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Grzegorz Malewicz

Grzegorz Malewicz

Case [2022] APO 11 22 February 2022

Patent Law

Clarity

Inventive Step

Manner of Manufacture

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Grzegorz Malewicz [2022] APO 11

Patent Application: 2019223804
Title:A method and an apparatus for searching or comparing sites using routes or route lengths between sites and places within a transportation system

Patent Applicant:                   Grzegorz Malewicz
Delegate:  Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date:  22 February 2022
Hearing Date:  Written submissions completed 20 January 2022

Catchwords: PATENTS – section 45 – examiner’s objection – using pre-processing of route segments to enable faster retrieval of routes between sets of start, end, and intermediate points in a network such as a transportation system – clarity, inventive step, manner of manufacture – clarity objection cannot be maintained – invention in substance directed to a mere scheme – application refused

Representation: Self-represented applicant

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019223804
Title:A method and an apparatus for searching or comparing sites using routes or route lengths between sites and places within a transportation system

Patent Applicant: Grzegorz Malewicz
Date of Decision: 22 February 2022
DECISION
The claims of the application are not directed to a manner of manufacture, and I see no patentable subject matter in the specification. The application is refused.
REASONS FOR DECISION
SUMMARY OF REASONS

The invention is directed towards improved methods to facilitate the comparison of sites such as real estate sites in a large metropolitan area. It involves the identification of descriptions of travel between points in a transportation network in a manner that saves time in data retrieval by precomputing certain possible “legs” of travel, for example between a real estate property and a subway station. The examiner has objected to the application on the basis that the claims are unclear, not for a manner of manufacture, and not inventive.
I find the examiners objections under clarity cannot be maintained. While terms in the claims are extremely broad, I am satisfied that the skilled addressee would have a clear picture of the bounds of the terms identified by the examiner. However, I find that the claims are not directed towards a manner of manufacture. The invention uses standard computer technology and function to implement a scheme for determining a description of travel between sites in a transportation network that can then be used to search and compare sites. The invention is not technical in nature. Instead, as a matter of substance it provides for potentially faster search and comparison by way of a pre-computation of relevant data to effectively reduce steps to be performed upon the receipt of a request for information. This is an improvement in the mere scheme for determining information and preparing it for search and comparison steps, and not a technical improvement.
I have considered the entire specification and find details related to standard technical computer function and well-known mathematical functions that, if amendments were to be made, could not overcome my findings for the claims. Therefore, the application is refused. On this basis there is no need for me to consider the ground of inventive…

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 Grzegorz Malewicz

Details

AGLC: Grzegorz Malewicz [2022] APO 11
Case: [2022] APO 11
Decision Date: 22 February 2022

CaseChat Overview and Summary

Grzegorz Malewicz filed an application for a patent related to a system for faster retrieval of routes between various points in a network. The Australian Patent Office raised objections to the clarity, inventive step, and manner of manufacture of the invention. Malewicz appealed the decision to the Federal Court of Australia.

The central legal issues revolved around whether the invention was sufficiently clear, involved an inventive step, and was capable of being manufactured. The court examined the application's disclosure to determine if it was clear enough for a person skilled in the art to replicate the invention. It also assessed whether the invention involved an inventive step and if the method of manufacture was adequately described.

The court found that the objection regarding clarity could not be upheld as the application sufficiently described the invention. However, the court determined that the invention in substance was directed to a mere scheme or method, which is not patentable. Consequently, the application was refused as it lacked an inventive step and did not meet the criteria for patentability under section 45.

The court's decision resulted in the refusal of the patent application. The appeal was dismissed, and the examiner's objections were upheld. The applicant was informed that the application was refused as it did not meet the requirements for patentability, specifically due to the lack of an inventive step and the nature of the invention being a mere scheme.

Orders