Electronic Tax-Free Shopping Ltd v Fexco Merchant Services [2015] FCA 41

Electronic Tax-Free Shopping Ltd v Fexco Merchant Services [2015] FCA 41

The proposed amendments are not allowable because they introduce a conceptual shift from distinguishing between issuers to distinguishing between currencies of cardholder accounts, thereby resulting in the specification claiming matter not in substance disclosed in the specification as filed and causing claims to fall outside the scope of pre-amendment claims, contrary to s 102(1) and s 102(2) of the Patents Act 1990 (Cth), and further failing to fully describe the invention in accordance with s 40(2)(a) of the Act.

Parties
Applicant: Electronic Tax-Free Shopping Ltd; First Respondent: Fexco Merchant Services; Second Respondent: National Westminster Bank PLC; Third Respondent: Travelex Outsourcing Pty Ltd; Fourth Respondent: Australia and New Zealand Banking Group Limited ACN 005 357 522; Fifth Respondent: First Currency Choice Pte Ltd
Jurisdiction
Australia
Judgment Date
06 February 2015
Procedural Posture
Appeal From Commissioner of Patents / Judgment on Appeal; Determination of Allowability of Proposed Amendments
Outcome
Second appeal dismissed; amendments not allowed
Legal Topics
Patents, Patent Amendments, Dynamic Currency Conversion, Opposition Proceedings
Intellectual Property Patents Patent Amendments Dynamic Currency Conversion Opposition Proceedings

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Parties

Electronic Tax-Free Shopping Ltd

Applicant

Fexco Merchant Services

First Respondent

National Westminster Bank PLC

Second Respondent

Travelex Outsourcing Pty Ltd

Third Respondent

Australia and New Zealand Banking Group Limited ACN 005 357 522

Fourth Respondent

First Currency Choice Pte Ltd

Fifth Respondent

Procedural Posture

Appeal From Commissioner of Patents / Judgment on Appeal; Determination of Allowability of Proposed Amendments

Legal Issues

  1. 1 Are the proposed amendments to the accepted parent and divisional specifications allowable under the Patents Act 1990 (Cth)?
  2. 2 Do the amendments claim matter not in substance disclosed in the specification as filed?
  3. 3 Do the amendments cause claims to fall outside the scope of the pre-amendment claims?

Ratio Decidendi

The proposed amendments are not allowable because they introduce a conceptual shift from distinguishing between issuers to distinguishing between currencies of cardholder accounts, thereby resulting in the specification claiming matter not in substance disclosed in the specification as filed and causing claims to fall outside the scope of pre-amendment claims, contrary to s 102(1) and s 102(2) of the Patents Act 1990 (Cth), and further failing to fully describe the invention in accordance with s 40(2)(a) of the Act.

Court Disposition

Second appeal dismissed; amendments not allowed

Orders

  • By no later than 13 February 2015, parties bring in agreed draft orders giving effect to these reasons and providing for all additional steps necessary to bring the first appeal into readiness for hearing.