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The Banktech Group Pty Ltd

The Banktech Group Pty Ltd

Case [2023] APO 22 27 April 2023

Patent Law

Innovation Patents

Patentable Subject Matter

Manner of Manufacture

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
The Banktech Group Pty Ltd [2023] APO 22
Innovation Patent: 2021107597

Title:CASH TRANSACTION SYSTEM AND METHOD

Patentee:The Banktech Group Pty Ltd

Delegate:Felix White

Decision Date: 27 April 2023

Hearing Date: 18 November 2022, by video conference

Catchwords: PATENTS – innovation patent – examiner’s objection under s101B – manner of manufacture – method or system for conducting cash transactions – invention in substance directed to a regulatory innovation – alleged invention not a manner of manufacture – no patentable subject matter in specification - innovation patent revoked

Representation: Patent attorney for the Patentee: Daniel McKinley of Gestalt Law

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Innovation Patent: 2021107597

Title:CASH TRANSACTION SYSTEM AND METHOD

Patentee:The Banktech Group Pty Ltd
Date of Decision: 27 April 2023
DECISION

The claims of the Innovation Patent, as proposed to be amended, do not define a manner of manufacture. As I see no subject matter in the specification that would change this finding, I revoke the Innovation Patent.
REASONS FOR DECISION

This matter relates to innovation patent 2021107597 (the Innovation Patent) in the name of The Banktech Group Pty Ltd (the Patentee). The application for the Innovation Patent was filed on 29 October 2021 as a divisional application to 2021200770 having a priority date of 5 February 2021. The Innovation Patent was granted on 15 December 2021.
The Patentee requested examination under s101B on 24 December 2021. A first examination report issued on 28 February 2022, objecting on the grounds of lack of manner of manufacture, novelty and innovative step. A response without amendment was filed on 9 June 2022, which was followed by a second report maintaining all objections and issued on 8 July 2022. Following a statement of proposed amendments filed by the Patentee on 17 August 2022, a third report issued on 24 August 2022 which maintained the manner of manufacture objection. The Patentee requested to be heard in relation to the outstanding objection on 26 August 2022. This decision is directed to the specification as proposed to be amended on 17 August 2022.
Pursuant to Regulation 9A.4(a), the final date for certification was 28 August 2022. Pursuant to Regulation 9A.4(f), when the Commissioner gives a patentee an opportunity to be heard in relation to an examiner’s objection and issues a written decision, the period for gaining certification of the innovation patent would be extended until three months from the date the decision is issued.
The Patentee filed submissions on 11 November 2022, accompanied by a declaration[1] by Lukan Schwigtenberg (“LS”) also dated 11 November 2022. The matter was heard by video conference on 18 November 2022.
[1] A number of paragraphs of that declaration were redacted under Regulation 4.3(2)(b) as relating to commercial in confidence information.
As a preliminary matter, I would like to extend my thanks to the Patentee and their representative for an engaging discussion. I commend the Patentee for taking the time to appear in person, as I found the oral hearing helpful…

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: The Banktech Group Pty Ltd [2023] APO 22
Case: [2023] APO 22
Decision Date: 27 April 2023

CaseChat Overview and Summary

The matter involved an appeal by The Banktech Group Pty Ltd against the decision of the Australian Patent Office to refuse their application for an innovation patent. The appeal was heard by Felix White, a delegate of the Commissioner of Patents, on 18 November 2022. The innovation patent in question related to a method and system for conducting cash transactions through automated teller machines (ATMs), specifically allowing for transactions with both financial institutions and vendors. The key issue before the delegate was whether the claimed invention constituted a "manner of manufacture" under the Patents Act 1990, a requirement for patentability. The delegate found that the claimed invention was not a manner of manufacture because it did not involve a technical solution to a problem, but rather a regulatory innovation that allowed ATMs to bypass traditional interbank networks and directly transact with non-bank vendors. The delegate concluded that the substance of the invention was not technical in nature, but rather a transaction scheme characterized by the regulatory status of the entities being transacted with. Consequently, the delegate revoked the innovation patent as it did not meet the patentable subject matter requirement.

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