Jason Bayley - [2023] APO 25

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Jason Bayley [2023] APO 25

Patent Application: 2016431877
Title:Method and system for preserving and processing vehicle crash data evidence

Applicant:  Jason Bayley
Delegate:  Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date:  9 May 2023
Hearing Date:  Written submissions filed 7 March 2023 and 5 April 2023

Catchwords: PATENTS – section 45 – examiner’s objection – extracting and sharing crash data from a vehicle – invention in substance directed to a mere scheme – alleged invention not a manner of manufacture – application refused

Representation: Patent attorney for the applicant: Wallington-Dummer

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016431877
Title:Method and system for preserving and processing vehicle crash data evidence

Applicant: Jason Bayley
Date of Decision: 9 May 2023
DECISION
The claims of the patent application, as proposed to be amended, do not define a manner of manufacture. I am unable to find patentable material in the specification.

I refuse the application.
REASONS FOR DECISION
BACKGROUND

Jason Bayley (“the applicant”) filed patent application 2016431877 on 7 December 2016 as an application under the Patent Cooperation Treaty. The application has an earliest priority date matching the date of its filing. The application entered the national phase in Australia and was subject to three examination reports. Each report has contained an objection that the application is not directed to patentable subject matter as failing the requirements for manner of manufacture. After the third examination report the applicant requested to be heard in respect of the outstanding manner of manufacture objection.
The examination of the present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”) as the application was filed after 15 April 2013. Thus, I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application. Also, the final date for acceptance of the application was 17 November 2022. With this in mind, paragraph 13.4(1)(g) of the Patent Regulations 1991 is available to extend the time for gaining acceptance to 3 months from the date of the present decision (or longer if appropriate via subregulation 13.4(3)). Suffice to say, if an application is refused, there is no function to this time period.
The applicant was provided until 7 March 2023 to file submissions. After reviewing material on file related to the state of the art and concluding that this appeared insufficient, I provided a further period for the applicant to file submissions as to the state of the art.
SPECIFICATION
The description is short consisting of 12 pages, and begins by stating that conventionally, preserving stored vehicle crash data has required specialised knowledge and equipment. It adds at that[1]:
Vehicle telematics systems utilized by various companies have been capable of capturing and transmitting live vehicle data (data similar to that…

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: Jason Bayley [2023] APO 25
Case: [2023] APO 25
Decision Date: 9 May 2023

CaseChat Overview and Summary

In the case of Jason Bayley, the applicant sought to patent a system for extracting and sharing crash data from a vehicle. The dispute arose in the Federal Court of Australia, where the applicant's patent application was met with objections from the examiner. The central issue before the court was whether the invention claimed by the applicant was a manner of manufacture as required by section 45 of the relevant legislation.

The court examined the nature of the invention and determined that the invention in substance was directed to a mere scheme or method of conducting a business. The court found that the invention did not constitute a manner of manufacture because it lacked the physical or tangible aspect required by law. The applicant's invention was essentially a process, which was not protected under the legislation.

As a result, the court refused the patent application. The reasoning was based on the interpretation of section 45, which requires an invention to be a manner of manufacture. The court held that the applicant's invention did not meet this requirement and thus could not be patented. The final orders of the court were that the application for a patent be refused, and the applicant's appeal against the examiner's decision was dismissed.

Orders