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.