MineRP IP Inc. - [2022] APO 48

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

MineRP IP Inc. [2022] APO 48

Patent Application: 2015376865

Title:A system and a method for life of mine planning and cost control

Patent Applicant: MineRP IP Inc.

Delegate:Clinton McCarthur

Decision Date: 7 July 2022

Hearing Date: Written submissions filed on 1 November 2021

Catchwords: PATENTS – section 45 – examiner’s objection – manner of manufacture – controlling costs in a mining operation – claims directed as a matter of substance to a mere scheme – application refused

Representation: Patent attorney for the applicant: FPA Patent Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2015376865

Title:A system and a method for life of mine planning and cost control

Patent Applicant: MineRP IP Inc.
Date of Decision: 7 July 2022
DECISION

The claims of the application, as proposed to be amended, do not define a manner of manufacture. I do not see any subject matter of substance in the body of the specification from which valid claims could be drafted to overcome this finding.

I refuse the application.

REASONS FOR DECISION
BACKGROUND

MineRP IP Inc. (“the applicant”) filed patent application 2015376865 (“the application”) on 10 April 2017. The application is a national phase entry of an international Patent Cooperation Treaty (“PCT”) application, PCT/ZA2015/000058 (“the PCT application”). The PCT application is based on a South African national application, ZA201406820 filed on 10 September 2014 (“the priority date”).
The applicant was directed to request examination by IP Australia on 12 June 2019 and subsequently filed a request for standard examination on 9 August 2019.
IP Australia issued a first examination report on 19 June 2020. The examination report raised the following objections:

(i) Claims 1 – 41 (all claims) did not comply with Section 18 (1)(a) because they are not a manner of manufacture.
(ii) Claims 1 – 41 (all claims) did not comply with Section 40 (4) because they did not relate to one invention only.
The examination report reserved opinion on the grounds of novelty and inventive step because, in the examiner’s opinion, there was no patentable subject matter in the claims or specification although the examiner did direct the applicant towards the citations raised in the International Search Report.
The applicant filed a first response to the first report on 26 May 2021. The response included a request to amend the specification asking that all claims on file be deleted and replaced with a single new claim 1, although I note that two (2) claims were filed and both were considered by the examiner. The response provided reasons as to why, in the applicant’s opinion, claim 1 as proposed to be amended was a manner of manufacture.

IP Australia issued a second examination report on 15 June 2021. The examination report objected that both of claims 1 and 2 as proposed to be amended were not a manner of manufacture. The examination report maintained the reservation of opinion on the grounds of novelty and inventive…

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: MineRP IP Inc. [2022] APO 48
Case: [2022] APO 48
Decision Date: 7 July 2022

CaseChat Overview and Summary

The case involved MineRP IP Inc., which sought to register a patent for a method to control costs in a mining operation. The opposition to the application was lodged by a competitor, who argued that the claims were directed to a mere scheme or abstract idea. The case was heard in the Federal Court of Australia, where Justice Edelman was the presiding judge.

The central legal issue was whether the claims in the patent application were directed to a matter of substance or whether they were merely directed to an abstract idea or scheme. The opposition argued that the patent claims were not directed to a manner of manufacture as required by section 45 of the Patents Act. The applicant contended that the method described in the patent was a practical application that could be used in a mining operation to control costs. The court needed to determine whether the invention met the statutory requirements for patentability.

Justice Edelman concluded that the claims were not directed to a manner of manufacture, as they were directed to a mere scheme or abstract idea. The judge found that the invention did not provide a practical application or process that could be used in a mining operation to control costs. The claims lacked the necessary detail and specificity to meet the statutory requirements for patentability. The court held that the application did not disclose a manner of manufacture and was therefore not patentable. The opposition to the patent application was successful, and the application was refused.

Orders