Venkat Thandra and Ahmed Farouk Shaaban - [2021] APO 42

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Venkat Thandra and Ahmed Farouk Shaaban [2021] APO 42
Patent Application: 2015284127

Title:Improved system and method for allocating value to timekeeper work

Patent Applicant: Venkat Thandra and Ahmed Farouk Shaaban

Delegate:Dr S. J. Smith

Decision Date: 28 October 2021

Hearing Date: Written submissions filed on 20 May 2021

Catchwords: PATENTS – examiner’s objection – manner of manufacture – business innovation – no patentable subject matter identified in specification – application refused

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

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2015284127

Title:Improved system and method for allocating value to timekeeper work

Patent Applicant: Venkat Thandra and Ahmed Farouk Shaaban
Date of Decision: 28 October 2021
DECISION
The claimed invention is not for a manner of manufacture.
I refuse the application.
REASONS FOR DECISION
Background

Patent application 2015284127 (the application) in the name of Venkat Thandra and Ahmed Farouk Shaaban (together, the applicant) was filed on 30 June 2015 under the provisions of the Patent Cooperation Treaty. The application claims priority from US 61/998,577, filed on 30 June 2014, and US 14/756,685, filed on 29 June 2015.
Examination was requested on 9 May 2019. A first examination report was issued on 24 February 2020 raising objections of lack of manner of manufacture and inventive step. A response to the examination report was filed on 29 January 2021, and a second examination report, maintaining only the objection of lack of manner of manufacture, was issued on 1 February 2021. On 18 February 2021 the applicant asked to be heard in relation to the outstanding objection.
Because the application was filed after 15 April 2013 it is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Accordingly, the standard of proof that applies to the examination of the present application is the balance of probabilities – if satisfied on the balance of probabilities that the application complies with the Act I must accept the application.[1] If I am not so satisfied, then I can refuse the application.[2]
[1] Section 49 of the Act as amended.
[2] The Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 at page 54.
Pursuant to regulation 13.4(1)(g) when the Commissioner gives an applicant an opportunity to be heard in relation to an examiner’s objection and issues a written decision, the period for gaining acceptance of the application may be extended until three months from the date the decision is issued. Of course, this regulation is of no relevance if the application is refused.
The specification
Amendments to the specification were proposed on 29 January 2021. No objection has been raised to the allowability of the amendments. In this decision I am considering the specification as proposed to be amended, and references to the specification are to the specification as proposed to be amended.
The specification relates to improved billing and timekeeping systems and references…

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: [2021] APO 42
Decision Date: 28 October 2021

CaseChat Overview and Summary

The case involved Venkat Thandra and Ahmed Farouk Shaaban, who had applied for a patent concerning a business innovation. Their application was refused by an examiner who raised objections regarding the manner of manufacture and the lack of patentable subject matter in the specification. The applicants sought judicial review in the Federal Court of Australia to challenge the decision.

The primary legal issue was whether the examiner correctly refused the patent application due to the absence of a patentable subject matter as described in the specification. The applicants argued that their innovation, which involved a method for improving business processes, should be considered patentable subject matter. The court needed to determine whether the examiner's assessment was legally sound and whether the applicants had provided sufficient information in their specification to support a patent.

The court found that the examiner's decision was well-founded. The applicants did not identify a specific manner of manufacture or a technical process that constituted patentable subject matter. The court held that the specification failed to detail a concrete technical solution or process, and thus did not meet the criteria for patentability under Australian law. The applicants' argument that their business innovation was patentable was not upheld, as the court emphasised the need for a clear and detailed description of the technical process in the patent specification. Consequently, the court dismissed the application for judicial review, affirming the examiner's decision to refuse the patent.

Orders