Intuit Inc. - [2021] APO 51

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Intuit Inc. [2021] APO 51

Patent Application: 2015412785

Title:Escrow personalization system.

Patent Applicant:                   Intuit Inc.
Delegate:  M. G. Kraefft
Decision Date:  10 December 2021
Hearing Date:  Written submissions filed on 28 October 2021.

Catchwords: PATENTS – section 45 – examiner’s objection – whether invention is a manner of manufacture – online tax return preparation – structure or arrangement of tax return topics at user interface based on topic ranking – execution of model to generate topic ranking based on escrow data satisfying predetermined criteria – no unusual technical effect – application refused.

Representation: Patent attorneys for the applicant: Davies Collison Cave.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015412785

Title:Escrow personalization system.

Patent Applicant: Intuit Inc.
Date of Decision: 10 December 2021
DECISION
The claimed invention is not for a manner of manufacture. Moreover, there is nothing of substance in the body of the specification to overcome this finding.
The application is refused.
REASONS FOR DECISION
BACKGROUND

Intuit Inc. (“the applicant”) filed patent application 2015412785 as an international application under the Patent Cooperation Treaty (“PCT”) on 30 October 2015 (“the priority date”).
The application has been subjected to six examination reports. Throughout the examination history of the application, the examiner has maintained that the claims, including claims as proposed to be amended, do not define a manner of manufacture.
On 7 May 2021, the applicant requested to be heard.
While the final date for acceptance of the application was 8 May 2021, paragraph 13.4(1)(g) of the Patent Regulations may be available to extend the time for gaining acceptance to 3 months from the date of the present decision.
SPECIFICATION
At a broad level, the alleged invention relates to personalised electronic tax return preparation. The specification states that embodiments in this case are related around computer-centric and Internet-centric technologies such as an online tax return preparation application. Embodiments also involve user interfaces generated during preparation of electronic tax returns and personalising user interfaces for individual users relative to electronic tax return data.
Embodiments also involve data escrow systems. These systems may interface with the online tax return preparation application to respond to an application’s request for results generated by the data escrow system. Such results may be in the form of a personalised tax return topic ranking that is incorporated into an interview screen presented to a user. As a user navigates the interview screens, tax topics that are able to be selected within the interview screens are arranged according to the determined ranking rather than according to a static, default or fixed sequence. Examples of tax return topics that may be integrated into a personalised tax return topic ranking include income, deductions, and taxes paid.
The specification, as most recently proposed to be amended on 30 April 2021, ends with 33 claims. Claim 1 is the only independent claim. This claim reads as follows.
1.A computerized tax return preparation system, comprising:
an on-line tax return preparation application accessible by…

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: Intuit Inc. [2021] APO 51
Case: [2021] APO 51
Decision Date: 10 December 2021

CaseChat Overview and Summary

The matter involved Intuit Inc., which sought a patent for a system related to online tax return preparation. The primary dispute centred on whether the invention constituted a manner of manufacture under the relevant legislation. The case was heard and determined in the Federal Court of Australia. The central legal issue was whether the invention described in the patent application constituted a manner of manufacture, as required by the relevant statutory provisions. The invention related to a system for preparing tax returns online, which involved structuring or arranging tax return topics at the user interface based on a topic ranking. The ranking was generated by executing a model based on escrow data that met predetermined criteria. Intuit Inc. argued that the invention involved a manner of manufacture, while the examiner disagreed, resulting in a refusal of the patent application.

The court examined the statutory requirements for a patent to be granted, specifically focusing on whether the invention was a manner of manufacture. The court considered the nature of the invention and whether it involved a process or method that produced a physical or tangible outcome. In this case, the court found that the invention did not produce an unusual technical effect or result in a physical transformation of materials. Instead, it involved a software-based system for organising tax return topics based on a ranking model. The court held that the invention did not meet the statutory criteria for a manner of manufacture. Consequently, the application was refused.

The court's decision hinged on the interpretation of the statutory provisions and the nature of the invention. The court determined that the invention did not involve a process or method that resulted in a physical transformation or produced an unusual technical effect. Instead, it was a software-based system for organising tax return topics. The court's reasoning was based on the specific statutory requirements for a patent to be granted and the nature of the invention. As a result, the application was refused, and the invention did not receive patent protection.

The final orders of the court were that the patent application be refused. The decision was based on the court's interpretation of the statutory provisions and the nature of the invention. The court held that the invention did not meet the criteria for a manner of manufacture and, therefore, was not eligible for patent protection.

Orders