Patent Applicant: MasterCard International Incorporated - [2022] APO 32

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
MasterCard International Incorporated [2022] APO 32
Patent Application: 2019261819

Title:Method and system for processing blockchain-based transactions on existing payment networks

Patent Applicant: MasterCard International Incorporated

Delegate:R Subbarayan

Decision Date: 13 May 2022

Hearing Date: Written submissions filed on 30 March 2022

Catchwords: PATENTS – examiner’s objection – processing blockchain transactions on fiat currency payment networks – manner of manufacture – computer implemented invention – does not solve a technical problem or provide a technical solution – business innovation – invention not for a manner of manufacture – application refused
Representation: Patent attorney for the applicant: Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2019261819

Title:Method and system for processing blockchain-based transactions on existing payment networks

Patent Applicant: MasterCard International Incorporated
Date of Decision: 13 May 2022

DECISION
The claimed invention is not for a manner of manufacture.
Subject to appeal, I refuse the application.

REASONS FOR DECISION
BACKGROUND

Patent application AU 2019261819 in the name of MasterCard International Incorporated (the Applicant) was filed on 8 November 2019 as a divisional application of AU 2016263003 (the Parent) and claims an earliest priority date of 21 May 2015.
A first examination report was issued on 15 January 2021 with the sole objection that the claimed invention is not for a manner of manufacture. The report also noted that investigation into the novelty and inventiveness of the claimed invention is reserved pending resolution of this manner of manufacture objection.
On 17 November 2021, the Applicant requested to be heard in relation to this sole objection.
On 17 February 2022, the Commissioner advised the Applicant that the hearing would be done through written submissions and requested the Applicant to file their written submissions by 31 March 2022.
The Applicant’s written submissions (AWS) for the hearing were filed on 30 March 2022.
I also note that the parent application lapsed after the issuance of 3 adverse examination reports due to a failure to gain acceptance within the relevant period, with lack of manner of manufacture being the main objection raised by the examiner during examination of this application.
The claims of the present application are slightly different to those that were the subject of the manner of manufacture objection in the last examination report issued on the parent application.
SPECIFICATION
The present invention relates to a method and system for authorization of a blockchain-based transaction using traditional payment networks.
The specification starts off by noting problems for the payee in a blockchain transaction arising from the significant time it takes to process a typical blockchain transaction in a blockchain network.
“However, while blockchain currencies can often provide such safety and security for the payer's information, such security may be limited for payees, particularly due to the limitations of the blockchain. For example, it often takes a significant amount of time, around ten minutes, for a blockchain-based transaction to be processed, due to the computer processing time and resources required to verify and update 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

Case: [2022] APO 32
Decision Date: 13 May 2022

CaseChat Overview and Summary

The case involved an application for a patent by MasterCard International Incorporated, concerning a process for processing blockchain transactions on fiat currency payment networks. The primary issue was whether the invention related to a manner of manufacture, which is a necessary criterion for patentability under Australian law. The Federal Court of Australia was tasked with determining this matter.

The legal issues before the court centred on whether the invention met the criteria for patentability, specifically whether it constituted a manner of manufacture. The invention in question was a process that aimed to improve the efficiency of blockchain transactions on fiat currency payment networks. The court had to decide whether this process was technical in nature and solved a technical problem, or if it was merely a business innovation without a technical solution.

The court found that the invention did not solve a technical problem or provide a technical solution. It was held that the invention was essentially a business method aimed at improving the efficiency of blockchain transactions. This process did not involve a manner of manufacture as required by Australian patent law. Consequently, the application was refused on the basis that the invention did not meet the statutory criteria for patentability.

The court's decision was that the claimed invention was not for a manner of manufacture. The application was refused, subject to the possibility of appeal. The court emphasised that the invention, while innovative in the business sense, did not provide the technical solution required for patentability under Australian law.

Orders

Orders of the court

The claimed invention is not for a manner of manufacture.

Subject to appeal, I refuse the application

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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