Venkat Thandra; Ahmed Farouk Shaaban - [2022] APO 65

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Venkat Thandra; Ahmed Farouk Shaaban [2022] APO 65
Patent Application: 2015284128

Title:System and method for allocating value to timekeeper work

Patent Applicant: Venkat Thandra; Ahmed Farouk Shaaban

Delegate:Mr Kevin Restrick

Decision Date: 20 September 2022

Hearing Date: Written submissions filed on 4 June 2021 and 28 January 2022

Catchwords: PATENTS - examiner’s objection – whether invention is a manner of manufacture – fee agreement – scheme – business innovation – alleged invention not a manner of manufacture – application refused

Representation: Patent attorney for the applicant: Murray Trento & Associates Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2015284128

Title:System and method for allocating value to timekeeper work

Patent Applicant: Venkat Thandra; Ahmed Farouk Shaaban
Date of Decision: 20 September 2022

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

REASONS FOR DECISION
Background

The present matter concerns patent application 2015284128 (“the application”) in the name of Venkat Thandra and Ahmed Farouk Shaaban (together, “the applicant”). The application was filed on 30 June 2015 under the provisions of the Patent Cooperation Treaty. The application claims priority from US 61/998,577 filed 30 June 2014 and US 14/756,616 filed on 30 June 2015.
The application has been the subject of two examination reports. The objections in the first report were that the claimed invention was not for a manner of manufacture, the claims were not clear, and the claimed invention lacked an inventive step. Despite responsive submissions from the applicant and a statement of proposed amendments to amend the description and the claims the examiner maintained the manner of manufacture objection in a second report along with an objection that one claim was not clear.
On 26 February 2021 the applicant wrote to the Commissioner requesting to be heard in relation to objections outstanding in the second report. On 4 May 2021 the Commissioner wrote to the applicant indicating that the hearing would be conducted by way of written submissions. The applicant filed their submissions on 4 June 2021 (“the applicant’s submissions”). In addition to their submissions, the applicant proposed an amendment to claim 5 to address the clarity objection from the second examination report. On 3 December 2021, the Commissioner provided the applicant an opportunity to provide further submissions in response to the decision of the Full Court of the Federal Court in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (“Aristocrat ’21”). The applicant filed further submissions on 28 January 2022 (“the applicant’s further submissions”).
While the final date for acceptance of the application was 27 February 2021, when the Commissioner gives an applicant an opportunity to be heard in relation to an examiner’s objection and issues a written decision patent sub-regulation 13.4(1)(g) may be available to extend the time for gaining acceptance to 3 months from the date decision is issued. Of course, this regulation is of no relevance if the application is refused.

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 65
Decision Date: 20 September 2022

CaseChat Overview and Summary

The applicant's patent application 2015284128 was refused by the Delegate of the Commissioner of Patents. The application, in the name of Venkat Thandra and Ahmed Farouk Shaaban, sought to patent a "System and method for allocating value to timekeeper work". The primary objection was that the claimed invention did not constitute a "manner of manufacture" as required by section 18(1)(a) of the Patents Act 1990. The Delegate considered the legal principles surrounding patentable subject matter for computer-implemented inventions, drawing on case law and previous decisions. The Delegate found that the claimed invention, while useful in a business context, was primarily an administrative scheme rather than a technical innovation. The system described automated routine administrative tasks, such as scanning and optical character recognition (OCR) of documents, without introducing any novel technical problem-solving or computing improvements. Consequently, the Delegate concluded that the claims did not meet the statutory requirement of being a "manner of manufacture". The application was therefore refused.

Orders