Repipe Pty Ltd - [2018] APO 42

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Repipe Pty Ltd [2018] APO 42

Patent:2017100560 and 2017100943

Title:Methods and Systems for Providing and Receiving Information for Risk Management in the Field

Patentee:  Repipe Pty Ltd
Delegate:  Xavier Gisz
Decision Date:  28 June 2018
Hearing Date:  10 April 2018, in Melbourne

Catchwords: PATENTS - The invention is a system for risk assessment – examiner’s objection – claims are not for a manner of manufacture – no patentable subject matter present – patents revoked

Representation: Counsel: Benjamin Fitzpatrick
Patent attorney: Rohan James Wallace, IP Sentinels
Other: Jaqueline Outram, Inventor and CEO of Patentee

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2017100560 and 2017100943

Title:Methods and Systems for Providing and Receiving Information for Risk Management in the Field

Patentee: Repipe Pty Ltd
Date of Decision: 28 June 2018
DECISION
The invention claimed in all of the claims of both 2017100560 and 2017100943 is not a manner of manufacture. Having reviewed the specifications, I do not consider it appropriate to provide an opportunity to amend as it will serve no useful purpose. The patents are revoked.
REASONS FOR DECISION
Background

Innovation patent number 2017100560 was filed on 17 May 2017. The 560 Patent claims divisional status from international patent application PCT/AU2016/050179 (published as WO 2016/141442). The earliest priority date of the 560 Patent is 12 March 2015.
Innovation patent number 2017100943 was filed on 10 July 2017. The 943 Patent claims divisional status from international patent application PCT/AU2016/050179. The earliest priority date of the 943 Patent is 12 March 2015.
The Request for Examination of the 560 Patent was filed on 17 May 2017 and granted on 1 June 2017. Following three adverse examination reports the patentee requested to be heard on 2 February 2018.
The Request for Examination of the 943 Patent was filed on 10 July 2017 and granted on 20 July 2017. Following three adverse examination reports the patentee requested to be heard on 7 March 2018.
The matter was heard at the Melbourne office of IP Australia on 10 April 2018.
APPLICABLE LAW
The patents have filing dates of 17 May 2017 (for 2017100560) and 10 July 2017 (for 2017100943). As a consequence, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patents.
Thus the standard of proof that applies in the present case is the balance of probabilities. I must certify the patent if satisfied on the balance of probabilities that the patent complies with the Act. If I am not so satisfied, then I can revoke the patent.
Section 18 of the Patents Act 1990 provides that:-
(1A) Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies;
Manner of Manufacture
Case law
In

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: Repipe Pty Ltd [2018] APO 42
Case: [2018] APO 42
Decision Date: 28 June 2018

CaseChat Overview and Summary

Repipe Pty Ltd was involved in a dispute concerning the validity of a patent granted to the company for a risk assessment system. The matter was heard in the Federal Court of Australia, where the Commissioner of Patents objected to the patent on the grounds that the claims were not for a manner of manufacture and therefore did not constitute patentable subject matter. The court was required to determine whether the invention was a manner of manufacture and if it fell within the scope of patentable subject matter under the Patents Act 1990.

The court considered whether the invention constituted a manner of manufacture by examining the claims and specifications of the patent. The court found that the invention was not a physical object or process, but rather a system for risk assessment. The court concluded that the invention did not meet the criteria for a manner of manufacture as it was not an industrial process or method of making a product. As a result, the claims were not for a manner of manufacture and did not constitute patentable subject matter. The court further found that the invention was not a process in the traditional sense and did not involve any physical transformation or change to a tangible object. Therefore, the patent was revoked.

In light of the court's findings, the patent was revoked, and the claims were found to be invalid. The court held that the invention did not fall within the scope of patentable subject matter as it was not a manner of manufacture. The decision highlights the importance of ensuring that patent claims are properly drafted and that the invention meets the criteria for patentability. The revocation of the patent may have significant implications for Repipe Pty Ltd and its ability to protect its intellectual property.

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