Legal Research
Cases
Invention Pathways Pty Ltd

Invention Pathways Pty Ltd

Case [2010] APO 10 21 July 2010

Patentable Subject Matter

Intellectual Property Law

No judgment structure available for this case.

Type to search within this case.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Invention Pathways Pty Ltd [2010] APO 10

Patent Application:        2009201212
Title:METHOD FOR COMMERCIALISING INVENTIONS
Patent Applicant:           INVENTION PATHWAYS PTY LTD
Delegate:P.M. SPANN - DEPUTY COMMISSIONER OF PATENTS
Decision Date:               21 JULY 2010
Hearing Dates:               22 APRIL 2010 CANBERRA
Catchwords:                  PATENTS – examiner’s objections - application for an invention specific commercialisation system to facilitate success of inventions - business system or method - whether a manner of manufacture - whether collecting information into a computer implemented electronically fillable checklist meets requirement for an artificially created state of affairs - subject matter of a claim considered as a whole must fall within the scope of patentable subject matter - physical effect identified peripheral and subordinate to the substance of the claimed method - whether obvious - whether prior art ascertained - claimed method obvious - application refused
Representation:              For the Applicant:
Mr Gourley and Mr Lewis, Patent Attorneys, Cullens Brisbane

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009201212
Title:METHOD FOR COMMERCIALISING INVENTIONS
Patent Applicant: INVENTION PATHWAYS PTY LTD

DECISION

DelegateP.M. SPANN - DEPUTY COMMISSIONER OF PATENTS
Date: 21 JULY 2010

Decision:Patent application 2009201212 is refused pursuant to subsection 49(2) of the Act.

REASONS FOR DECISION

This matter concerns examiner’s objections in respect of the application and whether I should exercise the Commissioner’s power to refuse the application under subsection 49(2) of the Patents Act 1990.

Background

Patent application 2009201212 was filed as a divisional application on 27 March 2009. The parent application 2008201680 was filed as a standard complete application on 16 April 2008. It was the subject of six adverse examination reports and, having not obtained acceptance under subsection 49(1) of the Act, lapsed at the end of the period prescribed for that purpose. The present application relates to the same general invention but includes additional descriptive matter and substantially revised claims. Nevertheless three adverse examination reports have issued including similar objections of lack of patentable subject matter and obviousness as raised on the parent. No amendments to the claims and description of the complete specification have been proposed in response to the examiner’s objections.

The patent specification

The subject matter of the application is somewhat unusual being a method for commercialising inventions that includes the step of applying for patent protection. The specification indicates that the method is intended to facilitate the uptake of commercialisation of inventions taking into account the restricted timeframe to file for intellectual property rights and the effect of automatic patent publication. The latter is a reference to the practice in most jurisdictions of publishing patent applications 18 months after their earliest priority date.

From the detailed description it becomes clear that what is intended is a commercialisation planning process, called an invention specific commercialisation program (ISCP), that supports particular commercialisation or related business activities and promotes their completion within a timeline that is related to particular intellectual property (IP) treaties. The benefit of this is said to be to ensure that all commercialisation activities…

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 Invention Pathways Pty Ltd

Details

AGLC: Invention Pathways Pty Ltd [2010] APO 10
Case: [2010] APO 10
Decision Date: 21 July 2010

CaseChat Overview and Summary

Invention Pathways Pty Ltd applied for a patent on a method for commercialising inventions. The application was for a divisional application, and the earlier application had lapsed after failing to obtain acceptance. The application was objected to by the examiner on the basis of lack of patentable subject matter and obviousness. The applicant did not amend the claims in response to the objections. The Deputy Commissioner considered whether the invention was a manner of manufacture and whether it was obvious in light of the prior art. The Deputy Commissioner found that the invention was not a manner of manufacture because it was merely a scheme or plan without a substantive physical effect. The invention involved the use of a computer to facilitate the completion of commercialisation tasks, but this was peripheral to the substance of the invention. The Deputy Commissioner also found that the invention would have been obvious to a person skilled in the art. The prior art demonstrated systems that supported the commercialisation of patents and could be applied to address the problem identified in the specification. The Deputy Commissioner refused the patent application. The applicant did not appeal the decision.

Orders