Lempco Industries, Inc. - [2018] APO 61

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Lempco Industries, Inc. [2018] APO 61

Patent Application: 2015258248

Title:Computer implemented method and apparatus for establishing and executing a dynamic equity instrument

Patent Applicant:                   Lempco Industries, Inc.
Delegate:  Dr S. J. Smith
Decision Date:  12 September 2018
Hearing Date:  Written submissions filed on 13 June 2018

Catchwords: PATENTS – examiner’s objection – manner of manufacture –substance of invention a financial scheme – no patentable subject matter identified in specification – application refused

Representation: Patent attorney for the applicant: Allens Patent and Trade Mark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015258248

Title:Computer implemented method and apparatus for establishing and executing a dynamic equity instrument

Patent Applicant: Lempco Industries, Inc.
Date of Decision: 12 September 2018
DECISION
The claimed invention is not for a manner of manufacture.
I refuse the application.
REASONS FOR DECISION

Lempco Industries, Inc. (the applicant) filed patent application 2015258248 (the application) on 19 November 2015. The application is a divisional application based on application 2010206826, which claims priority from US 61/145,938 and US 12/689,132 and has an earliest claimed priority date of 20 January 2009. I note that a divisional application of the present application was filed on 2 May 2018 (2018203066).
The request for examination of the application was filed on 18 December 2015. Consequently, the amendments of the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to the present application.
A first examination report was issued on 3 May 2017 raising an objection of lack of manner of manufacture. An examination response was filed on 5 April 2018 and a second examination report issued on 27 April 2018. The manner of manufacture objection was maintained. A further response was filed on 1 May 2018, and the applicant was notified by telephone on 3 May 2018 that the examiner would be maintaining their objection. The applicant asked to be heard in relation to the manner of manufacture objection on 3 May 2018. Pursuant to regulation 13.4(1)(g) when the Commissioner gives an applicant an opportunity to be heard in relation to an examiner’s objection and issues a written decision, the period for gaining acceptance of the application may be extended until three months from the date the decision is issued. Of course, this regulation is of no relevance if the application is refused.
The standard of proof that applies to the examination of the present application is the balance of probabilities – if satisfied on the balance of probabilities that the application complies with the Act I must accept the application.[1] If I am not so satisfied, then I can refuse the application.[2]
[1] Section 49 of the Act as amended.
[2] The Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 at page 54.

THE SPECIFICATION

Amendments to the specification were proposed on 5 April 2018. References to the specification in this decision are directed to the specification as proposed to be amended.
The…

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: Lempco Industries, Inc. [2018] APO 61
Case: [2018] APO 61
Decision Date: 12 September 2018

CaseChat Overview and Summary

Lempco Industries, Inc. (the applicant) filed patent application 2015258248 (the application) on 19 November 2015. The application claims a computer-implemented method and apparatus for establishing and executing a dynamic equity instrument. The delegate refused the application, finding that the invention was not a manner of manufacture. The applicant sought to be heard on the matter and submitted that the invention was more than a mere business method or scheme, but rather a technical solution to the problem of implementing a dynamic equity instrument. The delegate disagreed, finding that the invention was, in substance, a financial scheme and not patentable. The applicant sought leave to appeal the decision to the Federal Court of Australia, which was refused.

The key legal issue in this case was whether the invention was a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. The delegate found that the invention was, in substance, a financial scheme, and not a manner of manufacture. The applicant argued that the invention involved more than a mere business method or scheme, but rather a technical solution to the problem of implementing a dynamic equity instrument. However, the delegate found that the invention was generic computer implementation of a financial scheme, and did not involve any ingenuity in the way the computer was utilised. The delegate concluded that the invention was not directed to a manner of manufacture, and refused the application.

The delegate's decision was based on a careful consideration of the relevant case law, and a detailed analysis of the substance of the invention. The delegate considered a number of factors relevant to determining whether the claimed invention, as a matter of substance, related to patentable subject matter. These included whether the contribution to the claimed invention was technical in nature, whether the invention solved a "technical" problem within the computer or outside the computer, and whether the invention resulted in an improvement in the functioning of the computer, irrespective of the data being processed. The delegate found that the invention was, in substance, a financial scheme, and not a manner of manufacture.

This case highlights the importance of carefully considering the substance of an invention when determining whether it is patentable. While the invention described in the application was clearly innovative and useful, the delegate found that it was not patentable because it was, in substance, a financial scheme. The case also highlights the need for a detailed and complete disclosure of the invention in the specification, in order to demonstrate that the invention involves more than generic computer implementation of a business method or scheme.

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