Catchwords: PATENTS – examiner’s objections - lotto game - whether a manner of manufacture - prize pool merely information not an artificially created state of affairs - payment of prizes not a “concrete, tangible, physical or observable effect” – method not patentable merely because it is operated in whole or part using a computer system – claims directed to a scheme - application refused .

Representation: Patent applicant: Mr S Berggren, patent attorney, Spruson & Ferguson, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2007240153

Title:Lotto Game

Patent Applicant: Iowa Lottery

Date of Decision: 21 October 2010

DECISION

Patent application 2007240153 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 2007240153 was filed as a divisional application on 6 December 2007. The parent application, 2002305717, was filed as an international application under the Patent Cooperation Treaty (PCT/US02/16710) on 24 May 2002 and claims priority from US patent application 60/293,406, filed on 24 May 2001. Following entry to the national phase it was the subject of two adverse examination reports including objections that the subject matter claimed was not a manner of manufacture and, having not obtained acceptance under subsection 49(1) of the Act, lapsed at the end of the period prescribed for that purpose.

Three adverse examination reports have issued in relation to the present application with the last indicating the intention of the Commissioner to set the matter for hearing. The applicant in turn has filed a number of submissions and proposed amendments in response. A fee payable for the applicants response to the second examination report was not paid when due and consequently the application lapsed. However an extension of time under s223(2)(a) for the payment of the fee has been recently allowed by the delegate and hence the application is restored. Its final date for acceptance is 10 March 2011.

The patent specification

The subject matter of the application concerns lottery games and more particularly lotto type games. A number of existing games of that type are described in the specification including Keno and Powerball^® which are also well known in Australia. A feature of those games is that the probability of winning is low. This means that large jackpots are possible but are also necessary to ensure the interest of a large player base is maintained.

Apparently this had led to a phenomenon of “jackpot fatigue” where higher and higher jackpots need to be offered to attract the same player interest. To support these, a very significant player base is required and has led to cooperation between gaming jurisdictions…

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 Iowa Lottery

Details

AGLC: Iowa Lottery [2010] APO 25
Case: [2010] APO 25
Decision Date: 21 October 2010

CaseChat Overview and Summary

In the case of Iowa Lottery, the primary focus was on the patentability of a lottery game system as outlined in Patent Application 2007240153. The applicant, Iowa Lottery, sought to patent a system designed to manage and pay out prizes in a multi-jurisdictional lottery game. The central legal issues revolved around whether the claims in the application were directed to a "manner of manufacture" as required by the Patents Act 1990 and whether the subject matter involved an artificially created state of affairs with economic utility.

The court examined the claims and specifications, concluding that the proposed lottery system did not meet the statutory requirement of being a manner of manufacture. The court held that the claims were not directed to a concrete, tangible, physical, or observable effect but rather were schemes or methods for organizing a lottery game. The court found that the prize pool and the method of managing and paying prizes did not result in an artificially created state of affairs that could be considered an application of science or technology. The payment of prizes, while economically significant, did not constitute a physical or observable effect sufficient to qualify as a manner of manufacture under the principles established in relevant case law.

Based on this reasoning, the court found that the application did not disclose patentable subject matter. The court refused the patent application under subsection 49(2) of the Patents Act 1990, concluding that no further amendments could remedy the deficiencies identified in the claims and specifications. The decision underscores the importance of distinguishing between schemes or methods and tangible, inventive processes or products when assessing the patentability of an invention.

Orders