Visa International Service Association - [2023] APO 31

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Visa International Service Association [2023] APO 31
Patent Application: 2017218390

Title:Methods and systems for using digital signatures to create trusted digital asset transfers

Patent Applicant: Visa International Service Association

Delegate:Greg Powell

Decision Date: 31 May 2023

Hearing Date: Written submissions filed on 27 April 2023

Catchwords: PATENTS – examiner objection – manner of manufacture – substance of the invention is an administrative arrangement – substance is not a manner of manufacture – no patentable subject matter identified in the specification – application refused

Representation: Patent attorney for the applicant: FPA Patent Attorneys Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2017218390

Title:Methods and systems for using digital signatures to create trusted digital asset transfers

Patent Applicant: Visa International Service Association
Date of Decision: 31 May 2023
DECISION

The claims of the application, as proposed to be amended, do not define a manner of manufacture.
I do not see any subject matter in the body of the specification from which valid claims could be drafted to overcome this finding.
I refuse the application.
REASONS FOR DECISION

Background

Patent application 2017218390 (the present application) was filed by Visa International Service Association (the applicant) on 27 January 2017 as a PCT application (PCT/US2017/015498). The present application claims priority from two US applications, with the earliest being filed on 12 February 2016.
The present application was filed after 15 April 2013. It is therefore governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. These amendments included the introduction of new s 49(1). Under this provision, I must accept the present application if satisfied on the balance of probabilities that it complies with the requirements of the Act. If I am not so satisfied, I can refuse the present application.
A first examination report was issued on 6 January 2022 raising objections in relation to manner of manufacture, s 40, novelty and inventive step. The applicant responded to the first examination report on 24 March 2022 by way of written submissions and proposed amendments to the description and claims. A second examination report issued on 30 March 2022 containing manner of manufacture and inventive step objections. A response was filed on 12 July 2022 with further submissions and amendments to the description and claims. On 3 August 2022 a third examination report issued containing an objection with respect to manner of manufacture. Another response was filed on 22 November 2022 with further submissions and amendments to the description and claims. A fourth report issued on 12 December 2022 objecting that the claims did not define a manner of manufacture. On 5 January 2023, the applicant requested to be heard. On 27 April 2023 the applicant filed written submissions (“written submissions”). I also note that the applicant filed a divisional application (2023200072) from the present application on the day after they requested a hearing on the present application.
Six…

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: [2023] APO 31
Decision Date: 31 May 2023

CaseChat Overview and Summary

Visa International Service Association lodged a patent application for a method of transferring digital assets between nodes on a network. The invention involved the creation of a digital asset by an issuer node computer, the digital signing of the asset by the issuer node computer, the application of a second digital signature by an administrative node computer, the storage of the asset and signatures on a blockchain, and the transfer of the asset to a recipient node computer. The application was objected to on the basis that the claims did not define a manner of manufacture. The applicant argued that the invention was technical in nature and involved a chain of digital signatures and a blockchain. The Commissioner found that the claims did not define a manner of manufacture because the invention was not technical in nature, but was instead an administrative arrangement. The Commissioner found that the claims did not define a manner of manufacture and refused the application.

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