Catchwords: PATENTS – examiner’s objections – method of purchasing domain names – construction of claims to a “computer implemented method” – whether a manner of manufacture – method and medium storing instructions to perform the method not patentable – no patentable subject matter disclosed – application refused.

Representation: Patent applicant: Mr M Ward, patent attorney, Shelston IP, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2005250809

Title:Certified offer service for domain names

Patent Applicant: Network Solutions, LLC

Date of Decision: 19 August 2011

DECISION

Patent application 2005250809 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 2005250809 is a PCT application. It was filed as an international application under the Patent Cooperation Treaty (PCT/US2005/017115) on 16 May 2005 and claims priority from US patent application 10/854,221, filed on 27 May 2004. Following entry to the national phase it has been the subject of five adverse examination reports, each including objections that the subject matter claimed is not a manner of manufacture. Three statements of proposed amendments have been filed but, since the examiner’s objections were maintained, the matter was set for hearing. The applicant has relied on written submissions which I will refer to as relevant in my findings below.

For the benefit of interested third parties I note that a divisional application of the present application was filed on 23 May 2011 (2011202381) claiming the same subject matter. This means that despite this, or any future decision in relation to this application, or the outcome of any appeal of my decision, the status of any rights that might arise from the subject matter of this application will remain undetermined pending examination of the divisional application (and indeed any further divisional filed before the determination of that application). While the option of filing divisional applications in the present circumstances is clearly permitted by the legislation and may well serve the interests of the applicant, I share the concerns expressed by the delegates in Christopher Gary Parmenter [2011] APO 26 at [71]-[72] and Discovery Holdings Limited [2011] APO 56 at [4], that the practice of filing divisional applications in anticipation of adverse Office decisions appears to be contrary to the public interest in the prompt resolution of patent rights as well as effective use of Patent Office resources.

The patent specification

The subject matter of the application concerns the purchasing of internet domain names. The specification however says very little, if anything, about any prior art or problem or difficulty said to be addressed. It rather describes in fairly…

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: Network Solutions, LLC [2011] APO 65
Case: [2011] APO 65
Decision Date: 19 August 2011

CaseChat Overview and Summary

Network Solutions, LLC, the applicant, sought to patent a method for purchasing internet domain names through a computer-implemented process. The Australian Patent Office (IPO) refused the application on the basis that the claims were not directed to a "manner of manufacture" as required by the Patents Act 1990. The applicant appealed the IPO's decision, arguing that the claims involved a physical phenomenon or effect resulting from the working of the method, specifically the sending of a message. The court was required to determine whether the applicant's method met the criteria for patentability under the Patents Act 1990, specifically whether it involved a "manner of manufacture" and whether it disclosed patentable subject matter.

The court considered the principles of claims construction and found that the mere specification of "a computer-implemented method" did not mean that each and every step of the method must be carried out by a computer. The court also found that the applicant's method did not involve an artificially created state of affairs, in the sense of a concrete, tangible, physical, or observable effect. The court noted that a physical thing characterised only by "intellectual information" remained non-patentable subject matter. The court concluded that the applicant's method constituted a commercial or financial scheme rather than a patentable business method, and that the effect of what was claimed was not the same as the inventions considered in previous cases. The court found that the applicant's method involved essentially only the collection of data, a non-specific validation step, generating data about the validation step and, based on the state of that data, generating a message. The court concluded that the applicant's method did not involve a substantive "concrete, tangible, physical, or observable effect" and did not disclose patentable subject matter.

The court upheld the IPO's decision to refuse the application. The court noted that the applicant had already had numerous opportunities to propose amendments and had filed a divisional application by which it may continue prosecution in relation to the same subject matter. The court found that providing a further opportunity to the applicant to propose amendments was not appropriate. The court concluded that there were lawful grounds for objection to the patent application and that the applicant should be refused. The application was refused pursuant to subsection 49(2) of the Patents Act 1990.

Orders