Griffith Hack Patent Attorneys continue success in ‘manner of manufacture’ cases

10 June 2019

Back in April 2018, Griffith Hack patent attorneys Nick Mountford and Jeremy Robinson had significant success in overcoming examiner objections to computer implemented inventions for Bio-Rad Laboratories, Inc.

We are excited to report on a further success in Bio-Rad Laboratories, Inc. [2019] APO 26 (7 June 2019). This decision relates to the previously reported outcome in Bio-Rad Laboratories, Inc. [2017] APO 38.

In that case, the Hearing Officer originally held that the patent claim was not for a “manner of manufacture” (i.e. the Australian requirement for patentable subject matter) but we were given an opportunity to amend the claims and were ultimately able to do so in a manner that lead to the case being accepted.

During the process of negotiating a claim that the Patent Office would accept, concerns were raised about what scope of claim was supported by the application based on passing comments made by the Hearing Officer in the decision which we had not had the opportunity to address.

This lead to us recommending a strategy of amending the claim to a scope that the Patent Office would clearly accept and filing a divisional application to pursue broader claims, which were the subject of the new decision.

Nick and Jeremy worked closely with the Applicant’s representatives to identify broader claims which would still satisfy the requirement for manner of manufacture and support. Knowing that the decision in relation to the parent would be highly persuasive, Nick and Jeremy requested a hearing by oral submissions.

Nick and Jeremy were able to convince the Hearings Officer that the broader claims of the divisional application were consistent with the decision in the parent case—that they were for a manner of manufacture. The second hearing process also provided us with an opportunity to address the concern raised after the original hearing about whether the claims were supported. Nick and Jeremy were able to prepare substantive written submissions addressing this point, and these were accepted by the Hearings Officer.

Throughout the process, Nick and Jeremy worked with the Applicant’s representatives towards a successful and desired result—acceptable claims with commercially focused scope.

Griffith Hack is committed to providing expert advice tailored towards the best solutions for our clients and their business objectives. Please contact Nick or Jeremy if you are facing similar problems with your IP.