Thursday, September 29, 2011

Recognising Greytown’s heritage


In an earlier blog post I talked about Greytown, my hometown.  Our Main Street boasts many original colonial buildings housing trendy cafes, boutiques, art galleries and antique shops.  Its heritage charm is a real drawcard for visitors and a source of pride for locals.

Yet only a small part of Greytown’s Main Street has protection as a Historic Heritage Precinct.  Last week a proposal to extend it a block north and a block south moved a step closer to fruition.  Further detail of the proposal is available in Proposed Plan Change 4 together with a map of the affected area.

The Combined Wairarapa Planning Committee heard from four submitters who generally support the proposal, and one who opposes the proposal entirely.  The Greytown Community Heritage Trust was one of those four submitters.  I talked about our submission in an earlier blog post.

Summaries of the submissions are set out in the agenda circulated before the meeting.

The Officers’ Report prepared before the hearing noted general support within the submissions for the plan change and summarised the matters raised.

Looking at the submissions made and the Officers’ report I think the plan change will go through.

Wednesday, September 28, 2011

NZ Patent Office closed again

Restaurant's "Sorry we're Closed" sign
Our local Patent Office has been closed for two days.  The sun still came up.  The sun still went down.  It’s been pretty much business as usual.  I think we can put this down to equal parts good luck and good management.

Hardware failure

The Intellectual Property Office of New Zealand (IPONZ) is the trading name of the New Zealand Patent Office.  The Patent Office itself is one of the New Zealand government agencies that is part of the Ministry of Economic Development (MED).

On Saturday 24 September a hardware failure brought down the website of IPONZ as well as a gaggle of government agencies I had never heard of.

IPONZ limped through Monday 26 September in what it referred to as “reduced functionality” mode.  Its online services were not available.  But we could still email, fax, courier and hand deliver correspondence.

By early afternoon IPONZ had “declared the Patent Office closed for transaction of business on Tuesday, 27 and Wednesday, 28 September 2011.”

Legislative provisions

Section 5A of the Patents Act 1953 provides that the Commissioner can declare the Patent Office closed where, because of an emergency or other temporary circumstances, the Commissioner is satisfied that it is or will be necessary or desirable to do so.

IPONZ announced that:
“Clients cannot access the Patent Office website … or transact business using our online services or search the registers.  The Commissioner is satisfied that under these circumstances it is necessary and desirable to declare the Patent Office closed at short notice…  If the deadline for filing an application or document falls on a day when the Office is closed, then the application or document can be filed on the next day when the Patent Office is open and will be deemed to have been filed in time.”
This is fine if you only have deadlines imposed by IPONZ.  However, another way of looking at this is that you couldn’t get an IPONZ filing date on Tuesday or Wednesday.  Thank goodness we didn’t have one of those urgent client-about-to-disclose-that-day situations.

The message was clear.  If you can’t use IPONZ’s online services, then you can’t use IPONZ at all.  It seemed a bit odd that we could fax, courier and hand deliver documents to IPONZ on Tuesday and Wednesday but that IPONZ would not date stamp them because its website wasn’t working.

I can see their point.  It’s important to maintain integrity of processes.  But it does make me wonder just at what point we became so reliant on IPONZ’s online services?

History repeats

I commented in an earlier blog post about another hardware-inspired IPONZ closed day.  I think we were fortunate this time that the failure happened on a Saturday.  The Patent Office is officially closed on Saturdays and Sundays so no-one expects to get a filing date for correspondence anyway.  That was the lucky part.

IPONZ opened on Monday to allow stakeholders to do whatever they had to do.  Later that day IPONZ issued a clear statement that it would close for the next two days.  That was the good management part.

Hardware failures are a fact of life.  Following the last failure MED confirmed that it could provide a fault-impervious system if it wanted to.  But it doesn’t believe the cost of doing so is justified.  I agree with them.

So we will all just manage as best we can.

Photo courtesy of author Nick Papakyriazis under Creative Commons licence.

Tuesday, September 27, 2011

Coppereye – the unpatentable database

eddeh's eye [edited]
In Coppereye Limited [2006] NZIPOPAT 30 (31 July 2006) we saw an applicant secure patent protection in New Zealand for a novel method of organising a database.  However, the Hearing Officer refused 4 independent claims for a novel database.  The database claims did not define an invention as they did not relate to a “manner of new manufacture”.

This was a bit of a surprising result given that novel data structures are patentable in New Zealand.  This case was held on the same day by the same Hearing Officer as Maximum Availability Limited [2006] NZIPOPAT 31 (31 July 2006) (see my earlier post).  It might be that the Maximum Availability database claim tainted the Coppereye claims.

The patent application

Coppereye Limited (the applicant) filed its application for a “database” in the United Kingdom as PCT application PCT/GB2001/005242 on 28 November 2011, entered national phase in New Zealand as NZ 526102, went through a few rounds with the examiner, and ended up in a hearing on 29 May 2006.

Database claim 49 read as follows:
49. A database which in use comprises an index and data and wherein the index is queried using a search key in order to locate data matching a search criterion the search key comprising at least one symbol, the or each symbol being represented by a plurality of bits, wherein the index is a hierarchical structure of nodes that is navigated during a search until a conclusion set is reached, and each node has up to two exit paths, wherein the index is searched by testing a decision group of the search key at each node, each decision group comprises at least one bit and at least some of the decision groups comprise a plurality of bits, and the structure is organised such that key symbols are not stored at a node in the structure.
Independent claims 59, 62 and 65 were of similar scope.

The examiner had objected that the claims were to a database, which is not a new manner of manufacture.

The database/computer program distinction

The applicant argued that a database is not a “mere collection of data” but rather an organised collection of data stored on computer readable media and organised into a structure that defines the set of operations that can be performed on it by a database management system.  In other words the structure defines the way in which the computer can be controlled to access and manipulate the data.

The Hearing Officer agreed.

The applicant argued that a database is indistinguishable from computer software and that the distinction between software and a database is arbitrary. When stored on a computer readable medium both software and a database are stored in binary form and are indistinguishable. Both a computer program and a database are stored as mere binary data to be interpreted by the computer.

The Hearing Officer disagreed.

He said there is a difference between the database and the program used to access it (the DBMS – Database management system).  The database is a structured (or organised) collection of information.  The DBMS is a set of instructions designed to extract the required data from the database by matching the searching criteria to the stored information.  Therefore the database, containing information organised in a predetermined manner, is distinct from the DBMS, the means used to access the data.

Case law

The Hearing Officer observed that a database can be considered as analogous to a table or spreadsheet in which data is arranged in a manner which facilitates searching and information retrieval.  He added that it is well established that such arrangements do not fall within the definition of “invention” as defined by section 2.

The applicant referred to Hughes Aircraft Company [1995] NZIPOPAT 3 (3 May 1995) (see my earlier post), arguing that a database analogously “embodies” a commercially useful effect, an organisational structure enabling fast and efficient access to and management and retrieval of the data stored in the database.

The Hearing Officer disagreed.  In the Hughes Aircraft case the invention claimed was a computer process or method for determining en route conflict between aeroplanes, whereas a database is essentially a collection of data, albeit arranged in a form in which the data is readily searched by suitable software.

The applicant referred to George N Haddad v The Commissioner of Patents [2000] NZIPOPAT 8 (2 May 2000) (see my post), arguing that a patentable invention must involve some sort of interaction with a real entity or achieve a tangible product or result.  A database, said the applicant, fulfils this requirement because the database involves interaction with a storage medium in that the data and details of the organisation of the data are stored on a computer readable storage medium and such storage requires modification of the storage medium which is a real entity.

The Hearing Officer disagreed.  There is a clear distinction between the database (data organised and stored in a certain way) and the DBMS (the program used to maintain, organise and access the data).

The applicant pointed out that Claim 62 of the present complete specification had been allowed in the United Kingdom in British Patent No 2 407 417 and that similar claims to those in the present case had been allowed in British patents Nos 2 406 679, 2 406 680, and 2 369 695.

The Hearing Officer didn’t care.  He observed that the British patents had not been considered by a Hearing Officer or a Court.  Therefore he did not consider them persuasive that they have been granted in their present form.

Further steps

The Hearing Officer concluded that a database per se can be considered as analogous to a table or spreadsheet in which data is arranged in a manner which facilitates searching and information retrieval and therefore does not fall within the definition of “invention” as defined by section 2.

He refused claims 49, 59, 62 and 65.  The remaining claims were allowable.  He referred the case back to the Patent Office for the completion of the pre-acceptance procedures.

Photo courtesy of author Mike Carroll under Creative Commons licence.

Monday, September 26, 2011

Ultramercial – another look at patentable subject matter

money!
In Ultramercial LLC v Hulu LLC (Case No. 2010-1544) we see the United States Court of Appeals for the Federal Circuit support the patentability of an invention for a method for monetizing and distributing copyrighted products over the Internet.

The patent

This case arose from an appeal from the United States District Court for the Central District of California.  Ultramercial, LLC and Ultramercial, Inc. (Ultramercial) filed suit against Hulu, LLC, YouTube, LLC, and WildTangent, Inc. (“WildTangent”), alleging infringement of US patent 7,346,545.

WildTangent filed a motion to dismiss, arguing that the ’545 patent did not claim patent-eligible subject matter.  The district court granted WildTangent’s motion to dismiss.  Ultramercial appealed.

The ’545 patent relates to a method for monetizing and distributing copyrighted products over the Internet.  It seeks to remedy problems with prior art banner advertising.  One such problem is declining click-through rates.  The invention introduces a method of product distribution that forces consumers to view and possibly even interact with advertisements before permitting access to the desired media product.

Claim 1 for example, contained a sequence of steps paraphrased below as:
  1. receiving media products from a copyright holder;
  2. selecting an advertisement to be associated with each media product;
  3. providing said media products for sale on an Internet website;
  4. restricting general public access to the media products;
  5. offering free access to said media products on the condition that the consumer view the advertising;
  6. receiving a request from a consumer to view the advertising;
  7. facilitating the display of advertising and any required interaction with the advertising;
  8. allowing the consumer access to the associated media product after such display and interaction, if any;
  9. recording this transaction in an activity log; and
  10. receiving payment from the advertiser.

Eligible subject matter

The Court noted that 35 U.S.C. 101 sets forth the categories of subject matter that are eligible for patent protection:
“[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title”.
Subject matter eligibility is merely a threshold check.  The categories of patent-eligible subject matter are no more than a “coarse eligibility filter”.  Claim patentability ultimately depends on the conditions and requirements such as novelty, non-obviousness, and adequate disclosure.

There is not a single ineligble category listed in title 35.  This suggests that, according to the Court, “any new, non-obvious, and fully disclosed technical advance is eligible for protection, subject to limited judicially created exceptions.”

Abstractness

The Court noted that judicial case law has created only three categories of subject matter outside the eligibility bounds of 35 U.S.C. 101.  These are laws of nature, physical phenomena, and abstract ideas.

This invention clearly does not relate to laws of nature nor physical phenomena.

It was noted that “[b]oth members of the Supreme Court and this court have recognized the difficulty of providing a precise formula or definition for the judge-made ineligible category of abstractness”.

In this case the mere idea that advertising can be used as a form of currency is abstract.  However, the Court observed that the ’545 patent does not simply claim the age-old idea that advertising can serve as currency.  Instead the ’545 patent discloses a practical application of this idea.

A practical application

The Court set out a few reasons as to why it considered the invention to be a practical application of an idea as distinct from the abstract idea itself.

Computer programming

Many of the steps in method claim 1 are likely to require intricate and complex computer programming.  Some steps clearly require specific application to the Internet and a cyber-market environment.  If the products are offered for sale on the Internet, they must be “restricted” by complex computer programming as well.  Viewing the subject matter as a whole, the invention was said to involve an extensive computer interface.

The Court did not define the level of programming complexity required before a computer-implemented method can be patent-eligible.  Nor did it hold that use of an Internet website to practice such a method is either necessary or sufficient in every case to satisfy 35 U.S.C. 101.

Abstract subject matter

The Court observed that a programmed computer contains circuitry unique to that computer.  That “new machine” could be claimed in terms of a complex array of hardware circuits, or more efficiently, in terms of the programming that facilitates a unique function.

Both this court and the Patent Office have long acknowledged that improvements through interchangeable software or hardware enhancements deserve patent protection.  Advances in computer technology are far from abstract.  Such advances, both hardware and software, drive innovation in every area of scientific and technical endeavor.

Written description

The Court observed that the broadly claimed method in the ’545 patent does not specify a particular mechanism for delivering media content to the consumer (i.e., FTP downloads, email, or real-time streaming).

However, the “coarse eligibility filter” of 35 U.S.C 101 should not be used to invalidate patents based on concerns about vagueness, indefinite disclosure, or lack of enablement.  These infirmities are expressly addressed
by 35 U.S.C. 112.

Mental steps

The Court referred to CyberSource Corp. v. Retail Decisions, Inc. (Case No. 2009-1358) (see my blog post) in which an alleged invention was found to claim an “unpatentable mental process”.  However the eligibility exclusion for purely mental steps is particularly narrow.

Unlike Cybersource, the claims of the ‘545 patent require inter alia controlled interaction with a consumer via an Internet website, something far removed from purely mental steps.

Further steps

The invention represents a practical application of the general concept of advertising as currency and an improvement to prior art technology.  The claimed invention was found to be not “so manifestly abstract as to override the statutory language of 35 U.S.C. 101.”

The Court reversed the district court’s dismissal of Ultramercial’s patent claims for lack of subject matter eligibility and remanded for further proceedings.

Photo courtesy of author Danielle Martineau under Creative Commons licence.

Thursday, September 22, 2011

A feathery coup


In my last poultry-themed post I described how we nursed our rooster Horace back to health.  A bit of homeopathic treatment and an injection from the vet and he was as good as new.  Or so we thought.

The next morning he was back under the hedge.  Looking miserable.  But no blood this time.  Right, no more of this moping around.  I dragged him out from under the hedge.  Picked him up.  Walked back to the hen coop.  I remembered the vet had told me he needs to be with his flock for optimum recovery.

A strange thing happened as we neared the coop.  He started tensing up in my arms.  Looking increasingly nervous.  I put him down on the ground so he could make his own way to his flock.  Out of nowhere the three remaining scruffy roosters appeared.  Started chasing poor Horace around, pecking him.

Suddenly all the pieces started falling into place.  Like a kind of B-grade movie where the hero(ine) eventually gets it and the director spells it out in a manner that the target audience with the target IQ will understand.

No sign of a struggle.  Dried blood on his head.  No damage to his claws.  He wasn’t fighting off a predator at all.  We had a little coup going on right under our noses.  So I shut Horace in the hen coop by himself.  We had snow forecast in the next few days.  He was literally going to freeze to death if the three feathered insurgents ran him off again.

It was time for a family group conference.  Do we let nature take its course and let the best rooster win?  Or do we load the dice?

We decided we were going to get rid of the three insurgents.  That afternoon.  How were we going to explain this to the kids?  It was quite easy.  We’ve been living in rural New Zealand for a few years now.  We only eat “naughty” animals.  I’ve perfected the technique of looking at an animal almost ready for the freezer.  Sucking air through my teeth.  Telling the kids that it’s starting to look a bit naughty.

The boys were really quite excited by the idea.  Our daughter wasn’t so enthusiastic.  But something had to be done.  And quickly.

Wednesday, September 21, 2011

Maximum Availability and the replicated database

Original Database
In Maximum Availability Limited [2006] NZIPOPAT 31 (31 July 2006) we saw an applicant secure patent protection in New Zealand for a novel method of replicating a database.  However the Hearing Officer refused a claim to the resulting replicated database.  The claim did not define an invention as it did not relate to a “manner of new manufacture”.

The patent application

Maximum Availability Limited (the applicant) first filed its application for a “method and apparatus for data processing” in New Zealand on 9 October 2000.  A few years passed while it filed a PCT application, entered national phase in New Zealand, went through a few rounds with the examiner, and ended up in a hearing on 29 May 2006.

Method claim 1 read as follows:
1. A method of replicating information from a source system at a target system comprising the steps of:
(a) receiving information strings from the source system; and
(b) assigning the information strings to serialisation groups for processing such that interrelated information strings are processed in the same serialisation group.
Claims 2-7 were method claims dependent on claim 1.

Claim 11 was the only claim at issue at the hearing.  It read as follows:
11. A database replicated by the method of any one of claims 1 to 7.
The examiner had objected that this claim was to a database, which is not a new manner of manufacture.  In the opinion of the examiner, a database is considered to be intellectual information which, irrespective of the form of storage or presentation of that information such as on a printed sheet, electronic display, or computer storage, is not patentable subject matter as it is a mere presentation of information.

The database/computer program distinction

The applicant argued that a database is not a “mere collection of data” but rather an organised collection of data stored on computer readable media and organised into a structure that defines the set of operations that can be performed on it by a database management system.  In other words the structure defines the way in which the computer can be controlled to access and manipulate the data.

The Hearing Officer agreed.

The applicant argued that a database is indistinguishable from computer software and that the distinction between software and a database is arbitrary. When stored on a computer readable medium both software and a database are stored in binary form and are indistinguishable. Both a computer program and a database are stored as mere binary data to be interpreted by the computer.

The Hearing Officer disagreed.

He said there is a difference between the database and the program used to access it (the DBMS – Database management system).  The database is a structured (or organised) collection of information.  The DBMS is a set of instructions designed to extract the required data from the database by matching the searching criteria to the stored information.  Therefore the database, containing information organised in a predetermined manner, is distinct from the DBMS, the means used to access the data.

Previous decisions

The Hearing Officer observed that a database can be considered as analogous to a table or spreadsheet in which data is arranged in a manner which facilitates searching and information retrieval.  He added that it is well established that such arrangements do not fall within the definition of “invention” as defined by section 2.

The applicant referred to Hughes Aircraft Company [1995] NZIPOPAT 3 (3 May 1995) (see my earlier blog article), arguing that a database analogously “embodies” a commercially useful effect, an organisational structure enabling fast and efficient access to and management and retrieval of the data stored in the database.

The Hearing Officer disagreed.  In the Hughes Aircraft case the invention claimed was a computer process or method for determining en route conflict between aeroplanes, whereas a database is essentially a collection of data, albeit arranged in a form in which the data is readily searched by suitable software.

The applicant referred to  George N Haddad v The Commissioner of Patents [2000] NZIPOPAT 8 (2 May 2000) (see my earlier blog article), arguing that a patentable invention must involve some sort of interaction with a real entity or achieve a tangible product or result.  A database, said the applicant, fulfils this requirement because the database involves interaction with a storage medium in that the data and details of the organisation of the data are stored on a computer readable storage medium and such storage requires modification of the storage medium which is a real entity.

The Hearing Officer disagreed.  There is a clear distinction between the database (data organised and stored in a certain way) and the DBMS (the program used to maintain, organise and access the data).

Novelty in the database

The patent examiner assessing the case had earlier noted that:
“the replicated database of claim 11 is not new but a copy of a database, that is, an identical database. Replicating a database does not make the database new as the process of claim 1 is not ‘manufacturing’ the database but is copying or replicating it.”
The Hearing Officer agreed.  He observed that:
“the invention of the present complete specification is a method for ‘replicating’, or copying, a database from one system (a ‘source system’) to another system (a ‘target system’). The two databases are substantially identical with no changes being made to the data in the copying process. 
It seems to me that the process can be considered as analogous to the copying of a paper document. In such a case the copying might be performed by a novel method and/or apparatus (which would presumably be patentable) but would result in an identical representation of the information on the original paper. Neither the information itself nor its arrangement on the paper sheet would be patentable and it would be unlikely that a product by process claim for the copied information would be allowed.”
Further steps

The Hearing Officer concluded that the subject of Claim 11 was not an invention as defined in section 2 as it did not relate to a “manner of new manufacture”.  The remaining claims were allowable.  He referred the case back to the Patent Office for the completion of the pre-acceptance procedures.

Photo courtesy of author shindoverse under Creative Commons licence.

Tuesday, September 20, 2011

Still not cool

Telephone
In my last post I covered the Cool 123 decision in which a well known marketing technique combined with an SMS platform was found not to be a patentable invention.  A year later, Cool 123 unsuccessfully appealed the earlier decision to the High Court.  This is reported as Cool 123 Limited v Vodafone New Zealand Limited and Ors HC WN CIV 2006-485-698 [29 August 2007].

This is the first time ever that a New Zealand Court has considered the patentability of a business method.  While there is no prohibition against the patenting of business methods, this one was rejected on obviousness.

It was common ground that there was no new technology involved.  Advertising involving invitations to consumers to initiate a response were well known.  Inviting response by telephone was well known.  Text messaging was a newer phenomenon but had been around for several years.  There had been a rapid increase in the use of text messaging in 1999 just before the priority date of the claims.


Obviousness

Cool 123’s basic case on appeal was that it had lost on obviousness because of hindsight reasoning and because the Hearing Officer failed to understand the inventive concept.

Counsel for the appellant argued that:
“obviousness may be assessed only against documents proved to have been located by a diligent searcher who does not have knowledge of the claims or invention, but who has located the documents whilst seeking to obtain information that would be helpful in finding a solution to the particular problem or situation presented.”
The Judge disagreed.  France J observed that:
“obviousness, at this [opposition] stage, is to be assessed against the same pool of documents that were considered for prior publication …  It is difficult to see how else one can read the [novelty and obviousness] provisions.  Mr Henry submitted that one has to graft upon the plain wording of [the obviousness provision] a second level of ‘sieving’, such reduction to be achieved by the diligent searcher test.  That would be a considerable gloss to place upon [the opposition provisions].”
The Judge was equally dismissive of the suggestion that the Hearing Officer had earlier failed to understand the inventive concept.  In his view:
“the difficulty for the applicant was not that the alleged [inventive] step was not recognised, it was that it was not accepted to be [inventive], and the evidence supported such a conclusion.”
Not an invention

The Judge noted that it was accepted in the Ruling under appeal that a business method could be the subject of a patent application.

However in this case he had earlier noted that “the case for obviousness seems overwhelming”.  A finding of obviousness would have been available just on the common knowledge without needing to get into what other documents the unimaginative addressee might consider.

The question of whether there was an invention here largely reflected the same disputes underlying the question of obviousness.

The Judge agreed that the alleged invention was a mere scheme or plan, citing with approval the observations of the Hearing Officer that:
“[o]ne must, I think, be careful in equating ‘a new use for an old substance’ to ‘a new use for an old technology’. However, in the present case this is, as I see it, a valid argument. As discussed above under both Prior publication and Obviousness, all the features of the system claimed, including SMS technology and its properties, were individually known and it seems to me that it cannot be an ‘invention’ or ‘manner of new manufacture’ to replace the previously conventional means (telephone, email, or post) by the known SMS technology whose known properties or characteristics make it suitable for this use.”
Further steps

The appeal was declined.  Each aspect of the Hearing Officer’s ruling was confirmed.

Photo courtesy of author plenty.r. under Creative Commons licence.

Monday, September 19, 2011

A not so cool invention


Telephone
It’s been a few years since Cool 123 combined a well known marketing technique with an SMS platform and applied for patent protection in New Zealand.  In this post I’ll cover the opposition hearing reported as Cool 123 Limited v Telecom Mobile Limited, Vodafone New Zealand Ltd, The Hyperfactory Limited, Bulletin Wireless Limited, Lateral Profiles Limited [2006] NZIPOPAT 11 (13 March 2006).  In the next post I’ll cover the appeal to the High Court.

Cool 123 has now been struck off the register.  All patents and patent applications in the name of Cool 123 have lapsed.  So we should all have a pretty good idea of the outcome of this case.

The patent application

Cool 123 Limited (the applicant) filed a patent application back on 7 April 2000 with a provisional specification titled “Interactive marketing system”.  The applicant followed this up with a complete specification on 5 April 2001.  The application was allowed and published for opposition purposes on 30 May 2003.

The application was opposed by Telecom Mobile Limited, Vodafone New Zealand Limited, The Hyperfactory Limited, Bulletin Wireless Limited, and Lateral Profiles Limited.

Claim 1 of the patent application, including amendments made on the day of the hearing, read as follows:
1. An interactive marketing and/or survey system utilising a short message systems protocol (SMS) provided on a mobile or cell phone including in combination:
presentation means for presenting an advertisement of an advertising campaign, the advertisement inviting a participant to respond with a defined short text message to be sent as a call to a defined destination telephone number, the defined short text message being distinct for each advertising campaign and containing a distinct pre-allocated character string and the defined destination telephone number being the same for multiple campaigns, computerised means associated with said defined telephone number for receiving the participant's short text message and processing the received message by comparing selected data from the received message with data contained in one or more retained reference records, said reference records constituting pre-allocated character strings, wherein in operation, if the selected data from the received message matches data contained in the one or more retained reference records then information relating to the call is stored in a database, and a reply message is sent by the computerised means to the participant’s mobile or cell phone number acknowledging the participant’s message.
The Hearing Officer found that the claims of the complete specification (as amended) were entitled to the priority date of 7 April 2000, the date of filing the provisional specification.

Prior publication

The opponents collectively raised 14 documents to support the ground of prior publication.  Not all the documents were found to be published in New Zealand before the priority date.  However, those that were did not prior publish the claims.

Prior use

There were four instances of alleged prior use raised by the opponents.  None of these were found to invalidate the claims.

Obviousness

The Hearing Officer considered obviousness with regard to prior publication and prior use.

He followed the usual test for obviousness set out by Oliver LJ in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59.  This involves the steps of:

  1. Considering the inventive concept of the invention as claimed,
  2. Considering the cited published matter and the alleged prior use,
  3. Identifying the differences between the cited published matter, or alleged prior use, and the invention as claimed, and
  4. Asking whether these differences would have been obvious to a “normally skilled but unimaginative addressee”.

The inventive concept

The Hearing Officer defined the concept of the invention as “a viable interactive marketing and/or survey system based on SMS messages, transmitted to mobile or cell phones, including the features of Claim 1”.

Common general knowledge

The notional “skilled addressee” in this field was held to be a marketer with some knowledge of direct response marketing using telecommunications.  He or she would be part of a team containing a technical expert (or experts) able to advise on suitable telecommunication solutions, or at least able to call on such a person for advice.

At the priority date of the complete specification the following were clearly part of the common general knowledge in the appropriate field:

  • Advertisements inviting a response from the public
  • The use of text messaging (or SMS)
  • The use of a single telephone number for the response to several advertising campaigns
  • “Pull” advertising.

Obviousness with respect to prior publication

The Hearing Officer acknowledged that “pull” advertising using many forms of advertisement (such as billboards, newspaper advertisements, and radio and TV advertising) was well-known at the priority date.  Text messaging was also widely advertised and used.  The use of a single telephone number for multiple advertising campaigns was part of the common general knowledge.

He observed that:
“the claimed invention uses existing known interactive “pull” marketing techniques, combined with known methods of storing and processing replies received from potential customers.  The only difference between the invention claimed and the prior art …  is that the process claimed uses text messaging, a well-known technology, rather than mail or telephone, for receiving replies”.
He agreed that “no special skill is required to substitute SMS technology for the more usual mail or telephone”.

This ground was made out against all claims.

Obviousness with respect to prior use

The Hearing Officer observed that the VisionNet system, operating in New Zealand from 1996 to 2000,
“had all the features of the present invention except that it used DTMF (Dual Tone Multi-Frequency), rather than SMS, technology, which could be accessed by the participant using either landline or cell phone. It seems to me that this is an example of ‘analogous use’, substituting one well-known technology for another.”
This ground was made out against all claims.

Not an invention

Julian Miles, counsel for Vodafone, submitted that “the door was opened to the issuing of business method patents” by the earlier decision in Hughes Aircraft Company [1995] NZIPOPAT 3 (3 May 1995) .  The Hughes case adopted the approach of the Australian Federal Court in International Business Machines Corporation v Commissioner of Patents [1991] FCA 625; (1992) 22 IPR 417, in requiring simply “a commercially useful effect”.  I covered Hughes in an earlier blog post.

Mr Miles also pointed out that “a tangible result or product is required” and noted that in George N Haddad v The Commissioner of Patents [2000] NZIPOPAT 8 (2 May 2000) the Hearing Officer rejected an application for a method of wagering on the basis that the application disclosed only a new method for arriving at a winning number, based on mathematical manipulation of criteria.  I covered Haddad in an earlier post.

Greg Arthur, counsel for Telecom Mobile, pointed out that the present claims related to the collection and collation of data and were intellectual in character. The claims were for a scheme or plan for operating an interactive marketing and/or survey system whereby participants send a message to a telephone number and information relating to that call is processed and stored in a database. No technical details of how the system is implemented were described or claimed.

Mr Miles further pointed out that the outcome is identical, no matter which method (such as SMS, telephone, email, or post) is used.

Mr Arthur further submitted that this was a case of a “new use for an old technology”.  The High Court of Australia held in Commissioner of Patents v Microcell Ltd and Others (1959) 1A IPR 52 at 61-62:
“... it is not an inventive idea for which a monopoly can be claimed to take a substance which is known and used for the making of various articles, and make out of it an article for which its known properties make it suitable, although it has not in fact been used to make that article before. ...

... We have in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was bound to be a good thing to do.”

The Hearing Officer agreed with the opponents that there was no invention in this case.  His reasoning would later be cited with approval by the High Court.  He observed that:
“[o]ne must, I think, be careful in equating ‘a new use for an old substance’ to ‘a new use for an old technology’. However, in the present case this is, as I see it, a valid argument. As discussed above under both Prior publication and Obviousness, all the features of the system claimed, including SMS technology and its properties, were individually known and it seems to me that it cannot be an ‘invention’ or ‘manner of new manufacture’ to replace the previously conventional means (telephone, email, or post) by the known SMS technology whose known properties or characteristics make it suitable for this use.”
Insufficiency

None of the opponents pursued this ground.

Obtaining

Based on the evidence presented, the Hearing Officer came to the conclusion that he “cannot say categorically … that [the inventor] Mr Smith ‘obtained’ the alleged invention from Vodafone.”

Further steps

The Hearing Officer found the applicant’s amendments allowable and entitled to a priority date of 7 April 2000.  He also found all claims invalid based on the grounds of obviousness with respect to prior publication, obviousness with respect to prior use, and not an invention.

The applicant appealed to the High Court, which I will cover in the next post.

Photo courtesy of author plenty.r. under Creative Commons licence.

Thursday, September 15, 2011

The cup runneth over


It’s been almost a week since the chaotic start to the Rugby World Cup.  On Friday night in Auckland’s waterfront fan zone we saw an estimated 200,000 people squeeze into an area capable of holding 80,000.  A reported 370,000 people travelled on public transport over a 20-hour period, well in excess of the 240,000 of a normal weekday.

Closer to home we are seeing a more modest uplift in overnight visitors.  Masterton's Mawley Park camping ground reports five cup-related campervans in the past week.  Greytown’s Soldiers’ Memorial Park camping ground reports two cup arrivals.

Peter Wilson, General Manager of Destination Wairarapa, explains that this is what we expected.  At this early stage in the tournament we would expect to see mainly day visitors popping over from Wellington for our vineyards and country hospitality.  To me this sounds like a better grade of tourist than the muck we saw in Auckland’s fan zone.

That’s certainly been our experience so far.  There’s a really festive feel to Greytown’s Main Street.  Most shops are adorned with flags of all sizes and colours.  And the French Baker and Bar Salute, according to my wife, are great places for playing spot the international talent.  It’s only going to get better as the tournament progresses.

Wednesday, September 14, 2011

A bit of trouble with Horace


It has been a while since we “Hopped” six of our roosters.  Everything was great.  We had our big white rooster Horace.  A dozen or so hens.  And 3 scruffy young roosters.  We didn’t “Hop” the little guys last time because they weren’t causing any problems.  We thought.

Suddenly Horace disappeared.  He just wasn’t around.  We thought it was a little strange.  We don’t have many predators.  No native mammals.  But there are some introduced ones.  It might have been a wandering cat, possum, or ferret.  But strange that we didn’t find any sign of a struggle.

Well, a day later I did find him.  Alive but not in a good state.  He had climbed under a hedge to die.  I pulled him out from under the hedge.  He had dried blood on his head and looked pretty miserable.  He flapped and cawed and got away from me but fell straight into the creek.  I fished him out and held him in my arms.  He didn’t struggle any more.

We wrapped him up and sat him by the fire to dry off and warm up.  It looked to us like he had bravely fought off some predator but had come off second best.  We decided we would try our best to get him back on his scaly feet and once again assume his role as benevolent dictator.

We just happened to have a homeopath staying with us.  She attended to him.  The vet came around bit later and gave him a jab of something under his wing.  Now I should probably point out that we didn’t get the vet around just for our rooster.  He was around anyway treating a blind psychotic sheep.  I guess that’s the subject of another blog post.

The vet told us that Horace’s injuries weren’t life threatening.  He did comment it was strange the damage was only around his head and not his claws.  Roosters apparently use their claws to fight off other animals.  So their claws get a little damaged.  He told us to put him back in his natural environment with the rest of the flock.

So we did…

Tuesday, September 13, 2011

Surge Miyawaki – the case of the clever ear tag


In my last post I discussed Surge Miyawaki Co Ltd. v Livestock Improvement Corporation Limited [2004] NZIPOPAT 18 (13 September 2004) in which an ear tag was found to be novel and non-obvious but was not a manner of manufacture.

The Hearing Officer gave the applicant an opportunity to propose amendments.  However, he made his views clear in stating that “I find it difficult to see how the case can be saved”.

The applicant did manage to save the case, reported as Surge Miyawaki Co Ltd. v Livestock Improvement Corporation Limited [2005] NZIPOPAT 6 (7 March 2005).

The patent application

The applicant reframed claim 1 so that it did not relate to the ear tag per se but rather to a method of issuing the ear tag to identify an animal in a group of animals.  The opponent objected to the amendment.  The Hearing Officer allowed it.  He noted that:
“original claim 13 (as accepted) claimed a method of printing an ear tag with the required characteristics.  The amended claim 1 is to a method of issuing the ear tag and thus includes the steps of printing it as set out in the original claim 13.  The amended claim 1 includes an extra limiting step, the issuing of the ear tag.”

Claim 1 going forward read as follows:
1. A method of issuing an ear tag to identify an individual animal in a group of animals on a farm, the ear tag having a Farm Use Number requested by the farm having at most 4 digits printed on the ear tag to uniquely identify that individual animal from the others in the group when attached to the ear of that animal and that such number is printed in an enlarged format on at least one side of the ear tag;
the ear tag having an Animal Registration Number (ARN) printed in smaller format on the ear tag on at least one side thereof, said ARN including all, or all but one, of the digits of the Farm Use Number, and the Farm Use Number further using a minimum number of digits of the ARN,
the ARN consisting of numerals having at least seven digits, that is a selected number for each animal on the farm, that neither includes a specified farm number, participant code or a country or rural district code at the beginning of the Animal Registration Number nor includes the year number or an abbreviation thereof;
the method comprising the steps of animal registration organisation maintaining in a computer database a plurality of available ARNs which have not been previously assigned to an animal as well as those ARNs which have been assigned to an animal, and retrieving from the computer database one of the available ARNs for the ear tag which includes all, or all but one of the digits of the Farm Use Number, the retrieved ARN selected in a manner that minimises the storage space requirements in the computer database;
then transmitting the retrieved ARN and the Farm Use Number to an ear tag issuing organisation to issue the ear tag having on the ear tag the retrieved ARN printed in small digits and the Farm Use Number printed in large digits, and the ear tag organisation then issuing the ear tag.
Is there an invention?

The applicant argued that the question to be asked is “are the claims as amended proper subject matter for Letters Patent?”  He referred to a decision of the Australian High Court in the leading case National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 (16 December 1959):
“The right question is: ‘Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?’ …
… The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art (see Re Virginia-Carolina Chemical Corporation's Application (1958) RPC 35, at p 36) – that its value to the country is in the field of economic endeavour.”

This principle was further expressed in CCOM Pty Ltd et al v Jeijing Pty Ltd et al, No. QG13 of 1994 FED No. 396/94 Patents [1994] FCA 1168; (1994) 122 ALR 417, (1994) AIPC 91-079 (1994) 51 FCR 260, as:
“The NRDC Case ... requires a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour.”
The applicant argued that “the process of the amended claim 1, as required by the NRDC doctrine, belongs to a useful art, its value to the country being in the field of economic endeavour – the efficient handling of farmed animals such as cows.”  The applicant further argued that “the invention of amended claim 1 falls fairly within the further requirements of the CCOM v Jeijing case, being a method of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour.”

The Hearing Officer agreed.  He observed that:
“the unamended claim 1 claimed an ear tag with certain information printed thereon and thus the claim was, in effect, a form of ‘printed sheet’. The amended claim 1, on the other hand, claims a method for issuing an ear tag with certain characteristics, the method having a number of steps including the use of a computer database for storing non-assigned [animal registration numbers] ARNs, the selection and retrieval of suitable ARNs from the computer database, the transmission of the retrieved ARN and Farm Use Number to an ear tag issuing organisation, and the issuing of the ear tag with the required information printed on it.”
He further observed that:
“the amended claim 1 claims ‘a mode or manner of achieving an end result [the issuing of an animal ear tag] which is an artificially created state of affairs of utility in the field of economic endeavour [the ready identification and efficient handling of animals in a group of animals]’ (CCOM v Jeijing).”
Present claim 1 as amended, in his view, also passed the test set out in Hughes Aircraft Company [1995] NZIPOPAT 3 (3 May 1995).  I have discussed this decision in an earlier post.

Further steps

The Hearing Officer found the amended claims to be directed to a manner of manufacture.  The application proceeded to an issued patent.  It seems that the efficient handling of farmed animals, at least in New Zealand, is a field of economic endeavour.  Not that surprising really.

Monday, September 12, 2011

When’s an ear tag not just an ear tag?


We have a herd of two cows, so it’s not difficult to keep track of them.  Especially when they are different colours.  However, there are more cattle in New Zealand than people.  So other New Zealanders must have larger herds.  How do you tell them apart in the paddock?

In Surge Miyawaki Co Ltd. v Livestock Improvement Corporation Limited [2004] NZIPOPAT 18 (13 September 2004) we see an ultimately unsuccessful opposition to a patent application for an ear tagging system for stock.

The patent application

Surge Miyawaki filed New Zealand patent application 506319 as a national phase entry application out of PCT/JP99/06927 claiming priority from two Japanese applications filed on 9 December 1998 and 18 February 1999 respectively.

IPONZ published the accepted application for opposition purposes on 21 December 2001.  The opponent Livestock Improvement filed a Notice of Opposition followed by a couple of amended Notices, then a Statement of Case followed by an amended Statement.

The applicant filed a Counterstatement and a supplementary Counterstatement.  With both documents the applicant proposed unconditional amendments to the patent specification and claims.

There were 16 claims going in to the hearing.  The Hearing Officer accepted the applicant’s proposed amendments over the objections of the opponent.  Amended claim 1, for example, read:
1. An ear tag, containing an Animal Registration Number consisting of numerals, to be used by attaching it to an ear of an animal in order to identify an individual animal, characterized in that:
said Animal Registration Number having at least seven digits is printed, at least on one of the sides of said ear tag, and further,
some part of said Animal Registration number is enlarged and printed on the same or a different side of said ear tag where said Animal Registration Number is printed, in accordance with a request from an individual farm, or in accordance with the necessary numbers for an individual farm for identifying each animal on the farm, by using a minimum number of digits of said Animal Registration Number, and said Animal Registration Number is a selected number for the individual farm that neither includes a specified farm number, participant code or a country or a rural district code at the beginning of the Animal Registration Number nor includes the year number or an abbreviation thereof.
Prior publication

None of the four documents cited by the opponent were held to prior publish the claims.

Prior use

The opponent was unable to establish prior use based on evidence from two dairy farmer witnesses as well as its own evidence.

Obviousness

The Hearing Officer considered obviousness with regard to prior publication and prior use.

He followed the usual test for obviousness set out by Oliver LJ in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59.  This involves the steps of:

  1. considering the inventive concept of the invention as claimed,
  2. considering the cited published matter or prior use,
  3. identifying the differences between the cited published matter or prior use and the invention as claimed, and
  4. asking whether these differences would have been obvious to a “normally skilled but unimaginative addressee” in the art of the design and use of animal registration ear tags.

The inventive concept

The Hearing Officer identified the inventive concept as:
“an ear tag and a method of printing and using the ear tag … wherein [Animal Registration Numbers] ARNs can be issued within a predetermined number of digits substantially without restriction, and by the use of such ear tags desired individual identification numbers suitable for readily and individually identifying animals in respective farms can be enlargedly printed as requested by individual farms.”
Common general knowledge

The Hearing Officer accepted three of the opponent’s witnesses as representative of the “normally skilled but unimaginative addressee”.

The common general knowledge included:
“the use of animal identification systems which include only numerals but which incorporate codes to specify particular information such as the year of the animal’s birth and the particular herd, farm, or geographical location.  It is also known to enlarge a portion of the identification number on an ear tag for easy identification of particular animals in a herd.”
Differences between cited published matter and the invention as claimed

The Hearing Officer observed that:
“none of the cited documents describe the use of a sequential numbering system, free of specific codes, together with the selection, enlarging, and printing of digits already present in an allocated ARN for use for easy identification of animals on individual farms.”
Differences between the prior use and the invention as claimed

One of the opponent’s own witnesses, a dairy farmer, stated that:
“[i]f … it had been proposed to change the ear tag numbering system used in New Zealand to a straight numbering system (ie each animal in the country is allocated a number that does not have any relation to the farm or animal to which it is allocated), I would have objected strongly to changing … to a straight numbering system”.
The Hearing Officer, not surprisingly, observed that “the stated resistance of these farmers to the use of a straight numbering system would tend to teach away from the development and introduction of such a system”.

Not an invention

The opponent argued that the invention claimed was not a “manner of manufacture”.  The claims related “to the display, and subsequent utilisation by farmers, of information on ear tags and that it is well settled that novelty in an alleged invention cannot reside solely in intellectual content”.

The Hearing Officer referred to Nelson’s Application [1980] RPC 173 in which an instructional message stated in three different ways on a medium was not a new manner of manufacture.  It was held in that case that:
“The invention consisted solely of matter having intellectual, literary or artistic connotation and accordingly was not a manner of new manufacture suitable for grant of a patent…”.
Also referred to was Fishburn’s Application (1940) 57 RPC 245 involving a ticket “wherein the information necessary for the identification thereof is printed at least in duplicate and so arranged as to permit the ticket to be divided either transversely or longitudinally into two disconnected sections each bearing at least the said necessary information”.  It was held there that:
“The rule [relating to printed sheets] is a valuable general rule, but it is subject to exceptions, and in my view one exception is a case in which the real object of a particular arrangement of the words printed upon the sheet is to serve a mechanical purpose.”
The Hearing Officer observed that the allocation of numbers to individual animals cannot be other than a purely intellectual process.  Furthermore, the enlargement of a part of the number in a manner that highlights a portion of the number to ensure that it is easily visible to the farmer does not serve a “mechanical” purpose.

Further steps

The Hearing Officer refused the application on the sole ground that it was not an invention.  He allowed a further period for the applicant to propose amendments to overcome his finding, even though he found “it difficult to see how the case can be saved”.

The case was eventually allowed but that’s the subject of the next blog post.

Wednesday, September 7, 2011

One click opposition – time for law reform

money
It has been eight years since Amazon.com secured allowance for its New Zealand patent application 503311 titled “Method and system for placing a purchase order via a communications network”.  The application is better known somewhat inaccurately, as Amazon.com’s “one click patent” or “1-click patent”.

The application has recently emerged from an eight year long opposition.  The decision is reported as Amazon.com, Inc v Patrick Ryan Costigan [2011] NZIPOPAT 12 (21 July 2011).

In an earlier blog post I covered the initial hearing dealing with an objection by the opponent to extensions of time and claim amendments.  In another post I covered the full hearing on 10 June 2011.

Crowd sourcing

In October 2003 Russell Holland and Richard Shearer from a group called Fight the Patent reached out for prior art to support a challenge to Amazon’s 1-Click patent application.

At the date of the request, both Costigan and ITANZ had filed notices of opposition.  Both parties were finalising their statement of case.

This was the first time I encountered crowd sourcing of prior art searching.  Under our current law New Zealand patent applications are not published until acceptance (allowance) which is the start of the opposition period.

The prior art request could not have been made any earlier because the actual claim scope would not have been public until allowance.

Rookie mistakes

The opponent Pat Costigan represented himself.  There are a few clear signals in the reported decisions that he didn’t present his case as well as he should have.  For example:
  • “[h]is understanding of the claims and their interpretation is not correct”
  • “[t]his is a strained interpretation of the claims and is not permissible”
  • “… any prejudice to the opponent in this respect is self-imposed”
  • “[Opponent’s witness] Janczewski … is ‘irreparably affected by hindsight’ because he was provided with a copy of the opposed application before preparation of this evidence”
  • “[Opponent’s witness] Lobodzinski’s knowledge and understanding … are not representative of the knowledge and understanding of the ‘notional skilled addressee’”.
  • “[Opponent’s witness] Faris’s … qualifications were in the field of advertising, rather than in information technology of the development of the technical aspects of e-commerce systems”
  • Out of the 18 documents cited by the opponent, “Documents 13-15, 17 and 18 were not available in New Zealand before the priority date”.  This was established by the opponent’s own witness Jones.
  • “the opponent relies entirely on the mosaicing of prior art documents …  the law is clear that mosaicing of prior art documents is only allowable if that is what the notional skilled person or team would do …  the applicant’s witnesses, unlike those of the opponent, have addressed this issue”
My comments do not imply any criticism of Costigan.  I think it is perhaps a reflection that the patent opposition process is a little complex for lay members of the public.

The way forward

The New Zealand Patents Bill 2008 will eventually come into force.

The new law provides for automatic publication of New Zealand patent applications 18 months from the earliest priority date.  This will mean crowd sourcing of prior art searching can be carried out at an early stage and in a focussed informed way.

Once relevant prior art is located, there will be a provision for bringing that prior art to the attention of IPONZ.  Any person will be able to make an assertion that an invention claimed in a patent application lacks novelty and/or an inventive step in view of prior art.  It is then up to IPONZ to assess the relevance of that prior art.  The asserter takes no further part in the process.

Which is kind of what happened here in this opposition.  I wonder whether it would have been better for everyone if the assertion provision had been available and used instead of formal opposition.

Photo courtesy of author ambert under Creative Commons licence.

Tuesday, September 6, 2011

One click patent application proceeds to issue after eight year opposition

money
It has been eight years since Amazon.com secured allowance for its New Zealand patent application 503311 titled “Method and system for placing a purchase order via a communications network”.  The application is better known somewhat inaccurately, as Amazon.com’s “one click patent” or “1-click patent”.

In my last blog post I covered the initial hearing dealing with an objection by the opponent to extensions of time and claim amendments.  In this post I cover the full hearing on 10 June 2011.  The decision is reported as Amazon.com, Inc v Patrick Ryan Costigan [2011] NZIPOPAT 12 (21 July 2011).  The opponent didn’t appear at the hearing.

The patent application

New Zealand patent application 503311 began as a PCT application filed 10 September 1998.  The application claims priority from two US patent applications filed on 12 September 1997 and 23 March 1998 respectively.

There were 80 claims going into the hearing.  Claim 1 for example read as follows:
1. A method in a client system for ordering an item, the method comprising:
receiving from a server system a client identifier of the client system;
persistently storing the client identifier at the client system;
when an item is to be ordered,
displaying information identifying the item and displaying an indication of a single action that is to be performed to order the identified item; and
in response to the single action being performed, sending to the server system a request to order the identified item along with the client identifier, the client identifier identifying account information previously supplied by a user of the client system wherein the user does not need to log in to the server system when ordering the item; and
when account information is to be changed,
coordinating the log in of the user to the server system;
receiving updated account information; and
sending the updated account information to the server system
whereby the user does not need to log in to the server system when ordering the item, but needs to log in to the server system when changing previously supplied account information.
Prior publication

The opponent alleged all 80 claims were prior published (anticipated) but listed no documents and did not produce the “additional evidence” promised in his Statement of Case.

Obviousness

The Hearing Officer considered obviousness with regard to prior publication.  Prior use was not considered because the opponent had provided no evidence to support this ground.

He followed the usual test for obviousness set out by Oliver LJ in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59, slightly restated by the English Court of Appeal in Perzzoli SpA v BDMO SA [2007] EWCA Civ 588; [2007] FSR 37, and previously applied in New Zealand in Osmose New Zealand v Tim Tech Chemicals Limited [2010] NZIPOPAT 22 (15 November 2010).


This involves the steps of:

  • identifying the notional skilled addressee and the relevant common general knowledge of that person;
  • identifying the inventive concept;
  • considering the prior art;
  • identifying differences between the prior art and the invention as claimed; and
  • asking whether those differences would have been obvious to the skilled addressee armed with the common general knowledge.


The normally skilled but unimaginative addressee

The notional skilled addressee in this case was:
“a person involved in the design of an online ordering method and system, more particularly, an internet based e-commerce website, allowing customers to purchase items from merchants or vendors using the method or system”.
The Hearing Officer went on to determine the relevant common general knowledge of the notional skilled addressee.  He observed:
“It is clear … that in 1997 the field of e-commerce was fast-moving and most of the important developments in the field were made by private companies who kept them to themselves rather than publishing them or otherwise making them available to the general public.  Thus few details of such developments would, it seems to me, have been part of the ‘common general knowledge’.”
The inventive concept

The Hearing Officer observed that each of the independent claims defines a core inventive concept summarised as a system or method for ordering an item, having the following features:

  1. a server system providing to a client system a client identifier for identifying that client system, the client identifier being persistently stored at the client system;
  2. when an item is to be ordered, the client system displaying information identifying the item and displaying an indication of a single action that is to be performed to order the identified item; and
  3. in response to the single action being performed, the client system sending to the server system a request to order the identified item along with the client identifier, the client identifier identifying account information previously supplied by a user of the client system.
The cited published matter

The opponent raised eighteen documents in support of the obviousness argument.  The opponent relied entirely on the mosaicing of prior art documents and identified 12 different “prior art combinations”.

The Hearing Officer observed that the law is clear that mosaicing of prior art documents is only allowable if that is what the notional skilled person or team would do.  He said it necessitates more than a mere “after the event” assertion such as “I would have combined the references”.

None of the documents individually came close to disclosing the inventive concept.  The Hearing Officer concluded:
“It is quite clear to me, after reading the evidence of both parties, that in 1997, the priority date of the present application, e-commerce was in its reasonably early development with the most popular system being the 'Shopping Cart model'. This system, however, had two apparent drawbacks, a concern about security because information, such as credit card numbers, had to be transmitted over the Internet, and the 'transactional overhead' problem of too many steps causing buyers to give up part way through their purchasing process. 
The present invention, it seems to me, went a long way to solving these problems, against the conventional wisdom, by simplifying the process to a one-click purchasing sequence and the innovative use of its particular client identifier. None of the eligible cited documents, as I understand it, came close to foreshadowing these features.”
Not an invention

The opponent alleged that the method claims comprised “no more than a combination of known features and known steps all of which produce a known and expected result”.  On the system claims, he said that “there can be no invention in a known system”.  The claims are “a mere collocation of steps whose properties are well known with respect to the claimed invention, and from which collocation no surprising result is obtained”.

There were two basic questions here in assessing whether there was a “manner of new manufacture”.  Is there a manufacture and, if so, is it new?  The Hearing Officer said it was clear that the present invention was a “manufacture” as defined in section 2.  The question of whether it was new had “already been covered under the above discussion of Obviousness and need not be considered again”.

Further steps

None of the grounds were made out.  The opposition was dismissed and costs awarded to the applicant.  The application will now proceed to an issued patent.

Photo courtesy of author ambert under Creative Commons licence.

Monday, September 5, 2011

Amazon.com’s one click patent application all good to go

money
It has been eight years since Amazon.com secured allowance for its New Zealand patent application 503311 titled “Method and system for placing a purchase order via a communications network”.  The application is better known somewhat inaccurately, as Amazon.com’s “one click patent” or “1-click patent”.

It was great to see IPONZ recently dismiss an eight year opposition in Amazon.com, Inc v Patrick Ryan Costigan [2011] NZIPOPAT 12 (21 July 2011).  The application will now proceed to an issued patent.

For me it’s a bit like coming across a pet lamb you’ve put out to pasture.  A little older, a little leaner, but still healthy.

Preliminary matters

IPONZ published acceptance (allowance) of the patent application on 20 May 2003.  Right at the end of the 3-month opposition period, on 28 August 2003, Pat Costigan filed his own Notice of Opposition.  Following a quiet word from IPONZ and a generous extension he filed a replacement Notice of Opposition on 29 September.

The applicant then filed a counterstatement.  The opponent filed evidence in support of the opposition.  The applicant filed evidence in support of the application.  Both sides obtained extensions of time for various reasons for submitting documents.

The now defunct Information Technology Association of New Zealand (ITANZ) also filed a Notice of Opposition to the patent application.  The organisation withdrew following claim amendments made by the applicant.

It was the opponent’s objections to these claim amendments and his objection to the applicant’s requests for extension of time that led to the first hearing on 24 February 2005, reported as Amazon.com, Inc v Patrick Ryan Costigan [2005] NZIPOPAT 7 (21 March 2005).

Extensions of time

The Hearing Officer allowed the extensions of time requested by the applicant.

The opponent had objected to the extensions of time, stating that he had put some important software development work on hold while the issue of the patent application was settled.

In response, the Hearing Officer observed that “it appears to me that it may be the opponent’s own choice to hold off on this development work.  If this is so, then any prejudice to the opponent in this respect is self-imposed.”

Claim amendments

The Hearing Officer considered the applicant’s amendments to be allowable.

He politely pointed out to the opponent that he appeared to have no idea how patent claims worked.  The Hearing Officer observed that:
“[t]he opponent has objected to these proposed amendments.  I have read the opponent’s submissions and the opponent is, in my view, incorrect.  His understanding of the claims and their interpretation is not correct.  It is a feature of patent claims that the more integers there are in a claim the narrower becomes the scope of that claim.”
Further steps

The opponent seemed to throw in the towel after that.  He filed evidence in reply in mid 2006 but took no observable part in further proceedings.  There was a lengthy delay of 5 years before the opposition went to a full hearing on 10 June 2011.  The opponent didn’t appear at it.

I will cover the June 2011 hearing in the next post.

Photo courtesy of author ambert under Creative Commons licence.

Thursday, September 1, 2011

Our roosters meet Hop

In an earlier post I said that we locked up six roosters in our coop.  Ready to be “Hopped”.  We have a landscape gardener, Lyn Eglinton, who is helping us turn our paddocks into “grounds”.  Her husband Hop is a retired farmer.  He helps her out with her various projects.  He often grumbles that he is working harder now that he is retired.

On the day, Hop turned up with an axe, a chopping block and a sack.  If you would prefer to maintain a separation between paddock and plate, now is the time to stop reading!

I wasn’t there, but I have a pretty good mental picture about what went down.  My wife climbed into the coop.  Grabbed the first rooster by the feet.  Passed it outside to Hop, while averting her eyes.  Thunk!  Next one.  Thunk!  Next one.  Thunk!  And so on.  I was at work dealing with other types of cutting edge technologies.  But I heard all about it when I got home.

The roosters ended up being ‘processed’ by Hop and returned to us in tidy freezer bags, destined to be Rooster Pot Pie, Roster Panang Curry and other culinary delights.

One lucky rooster with more brains than the rest escaped. Slipped right out of the door past the executioner.  Lynn and Hop ended up coming back for that one.  They liked the look of him.  They have even given him a name: Lord Montdore. He’s right at home in their garden now.  Apparently he marches up to their back door every morning and crows until he gets breakfast.  He even seems to have overcome his mistrust of Hop!

I gather it was one of those reality moments for my wife.  It’s quite a transition for her from the charming winter wonderland of Boston’s Beacon Hill to a muddy paddock in rural New Zealand, handing hapless roosters to happy Hop.

Six more roosters gone.  Three more roosters to go.
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