Mölnlycke Health Care AB - [2023] APO 56

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Mölnlycke Health Care AB [2023] APO 56
Patent Application: 2017283178

Title:Procedure tray management

Patent Applicant: Mölnlycke Health Care AB

Delegate:Pradnya Satarkar

Decision Date: 8 November 2023

Hearing Date: 16 August 2023, via videoconference

Catchwords: PATENTS – examiner’s objection– manner of manufacture– management of surgical procedure trays– user interface– in substance directed to a mere scheme– alleged invention not a manner of manufacture– application refused

Representation: Patent attorney for the applicant: Ms Michelle Catto and Mr Charles Yip of FB Rice Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2017283178

Title:Procedure tray management

Patent Applicant: Mölnlycke Health Care AB
Date of Decision: 8 November 2023
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 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

The Application (2017283178) was filed in the name of Mölnlycke Health Care AB (The Applicant) on 20 June 2017 as PCT application no. PCT/EP2017/065068 and entered the Australian National Phase on 08 January 2019. The Application claims priority from EP16175554.1 and has an earliest priority date of 21 June 2016.
The Application had been the subject of four adverse reports. All four reports had included an objection to the claims as not defining a manner of manufacture. The first two reports also included an objection to the claims lacking inventive step.
In response to the fourth adverse report issued on 18 January 2023, the Applicant requested to be heard on 10 February 2023.
The Applicant filed their written submissions on 27 June 2023. The hearing was held on 16 August 2023 via videoconference.
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, the standard of proof that applies in the present case is the balance of probabilities (subsection 49(1)). 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.
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, or, pursuant to regulation 13.4(3), for a period of longer than three months if the Commissioner is satisfied that acceptance should be postponed.
The Specification
Along with their written submissions, the Applicant filed a fourth statement of proposed amendments on 27 June 2023. I do not see any issue around allowability of the proposed amendments. References to the specification in this decision relate…

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

Case: [2023] APO 56
Decision Date: 8 November 2023

CaseChat Overview and Summary

The case involved a patent application filed by Mölnlycke Health Care AB, which was challenged by an examiner on the grounds that the invention did not constitute a manner of manufacture under the Patents Act 1990 (Cth). The application related to a method for managing surgical procedure trays, which involved a user interface to facilitate the management of the trays. The dispute was heard in the Federal Court of Australia. The central legal issue was whether the invention described in the patent application constituted a manner of manufacture as required by the Patents Act 1990 (Cth). The court had to determine if the invention was a scheme or an idea, rather than a tangible process or product that could be manufactured.

The court examined the application and the examiner's objection, focusing on whether the invention was in substance directed to a mere scheme or an idea. The court held that the invention was not a manner of manufacture as it did not involve a process or mechanism that could be physically manufactured. The user interface described in the application was considered to be an abstract idea or a method of operation, rather than a concrete process that could be manufactured. The court found that the invention did not satisfy the criteria for a manner of manufacture, and therefore, the application was refused. The decision underscores the importance of distinguishing between an abstract idea and a tangible process or product when assessing patent applications under the Patents Act 1990 (Cth).

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