Coppereye – the unpatentable database

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.