Saturday, December 31, 2011

My 8 months of blogging

As December draws to a close it is time to reflect on my initial foray into the world of blogging.  This year I have the pleasure of publishing my last blog post for 2011 from the "summer office" at Riversdale Beach, Wairarapa.


One of the golden rules of blogging is that you need to focus your content on a niche and stay on topic.  I came across a good article a while ago in which the author observed that:
'[i]f you publish on many different topics, you're less likely to attract a loyal audience of high-value users. Busy people might visit a blog to read an entry about a topic that interests them. They're unlikely to return, however, if their target topic appears only sporadically among a massive range of postings on other topics. The only people who read everything are those with too much time on their hands (a low-value demographic).'
My niche, if you can call it that, involves patent law developments in New Zealand, Australia and the South Pacific.  This year I assumed the role of Vice-Chair, International and Foreign Law Committee of the American Intellectual Property Law Association (AIPLA).  Part of my role involves monitoring statutes, rules, regulations and judicial decisions of countries outside the United States relating to intellectual property generally.  So I do tend to write about other countries too.

I tend to stick to patent law in the fields of telecommunications, computing, networking technology, e-commerce, and business methods.  That's what I know about from my day job.  I try to publish reasonably regularly at a manageable rate.  About 3 posts a week.

I don't strictly stay on topic.  As a break from intellectual property law I tend to write about life in rural New Zealand.  I've often wondered whether I should split the blog into two.  However, I think I will keep it as one blog for now.  Feedback indicates that my target audience looking for intellectual property enjoy the variety.  

The American Bar Association has listed my blog in the ABA Journal blawg directory.  You can check the listing here.  This indicates to me that the occasional post off-topic doesn't seem to matter too much as long as the target topic is clear.

Where are the readers?

Who are these readers looking at my blog?  Where do they come from?  Over the last 8 months the top ten countries, in decreasing order, are:
  1. United States
  2. New Zealand
  3. United Kingdom
  4. Ukraine
  5. Australia
  6. Canada
  7. Germany
  8. China
  9. India
  10. Israel
What are my readers looking at?

The top ten posts, in decreasing order, are set out below.  Not all are about intellectual property.  One is actually about chickens.

Friday, December 23, 2011

Fang finds no surprises for identifying prizes

PrizesIn Sheng-Ping Fang [2011] APO 102 (20 December 2011) we see another computer-related invention chucked out by the Australian Patent Office.  The applicant represented himself at the hearing on 6 October 2011 so it is not that suprising to see an unsuccessful result.  However, he achieved much the same result as he would have had he been represented professionally.

The patent application

The applicant, Sheng-Ping Fang, filed Australian patent application 2010230079 on 13 October 2010.  There were 5 adverse exam reports during prosecution.  From 16 June 2011 the applicant represented himself up to and including the hearing on 6 October 2011.

There was some dispute over what claim amendments would be allowable.  For the purpose of the hearing the Delegate settled on the version of claim 1 amended on 16 June 2011 as follows:
1. A system for providing an award program on one or more servers and electronic devices, said system comprising:
a) a machine readable or executable instruction for providing a plurality of qualified events, wherein said qualified events provide a plurality of unique and, or shared award symbols to be collected or accumulated for completing a selection or plurality of complete award symbols with identical and different visual or physical characteristics and,
b) a machine readable or executable instruction for providing a selection or plurality of award symbols, wherein said award symbols consist of unique and, or shared award symbols that are selected from a collection of symbol pieces and, or symbol clones associated with a selection or plurality of said complete award symbols and,
c) a machine readable or executable instruction for providing a selection or plurality of prizes that are displayed alongside their corresponding or associated complete award symbols, said prizes are awarded on full or partial completion of said complete award symbols.
Substantial effect or transformation

It will be clear to readers where this is heading.

The Delegate referred to several Australian Court decisions:
  • National Research Development Corporation v Commissioner of Patents ("NRDC case") [1959] HCA 67; (1959) 102 CLR 252 (16 December 1959)
  • CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168; (1994) 122 ALR 417
  • International Business Machines Corporation v Commissioner of Patents [1991] FCA 625
  • Welcome Real-Time SA v Catuity Inc [2001] FCA 445 (17 May 2001)
  • Grant v Commissioner of Patents [2006] FCAFC 120 (18 July 2006)
He referred to the United States decisions Bilski v. Kappos, 130 S. Ct. 3218 and CyberSource Corp. v. Retail Decisions, Inc. (Case No. 2009-1358) (see my blog post).  Strangely, there is no mention of the more recent case Ultramercial LLC v Hulu LLC (Case No. 2010-1544) (see my blog post).

The Delegate also referred to some (but not all) of the Australian Patent Office decisions relating to the patentability of business methods and computer-related inventions.  Strangely, there is no mention of Visa Inc v CardinalCommerce Corporation [2011] APO 34 (25 May 2011) (see my blog post).

He observes at [56] that, while he is not bound by the Australian Patent Office decisions:
'the principle that consistently emerges out of these decisions is that inventions for pure business, commercial or financial schemes will not satisfy the requirements for being a manner of manufacture merely because the scheme is implemented using a computer. What is required is some substantial effect or transformation brought about by the use of the computer or other physical device.'
Abstract idea

The Delegate oberved at [59] that abstract ideas are not patentable subject matter.  It was clear (to the Delegate):
'that the core of the invention lies in the use of the unique and shared symbols ... These symbols enable users to win different prizes at different time periods, without the prizes being grouped and awarded hierarchically according to monetary value ... Although the invention can clearly be said to be in a field of economic endeavour, namely retail trading, the use of different types of award symbols in a loyalty scheme is in my view an abstract idea, mere intellectual information involving new symbols, which had never been held to be patentable subject matter.'
Use of a computer

The Delegate admits at [61] that "the system has to be implemented using a computer system and in that sense a computer system is integral to the invention".  However, according to the Delegate, this is not the same thing as bringing about a physical effect.

He observes that, reading the specification as a whole:
'there is very little description or details of the computer system. While there are brief references to computer programs, machine readable/executable instructions, machine readable devices, application and database servers and programming languages there is nothing in the specification to suggest that the use of these software programs or computer devices has brought about any substantial physical effect or transformation in the implementation of the award program'. 
The use of the computer, says the Delegate at [66]:
'merely results in the display of different kinds of award symbols in an electronic form. The specification is totally silent on any method steps involved in generating or providing these electronic award symbols using the computer ... Despite the computer implementation, it is my view that the substance of what is claimed remains a mere scheme or abstract idea that does not achieve an end result that is an artificially created state of affairs in the field of economic endeavour'.
The claimed invention, said the Delegate, is therefore not a manner of manufacture.

I wonder whether the result would have been any different if the Delegate had not carefully avoided mention of Ultramercial LLC v Hulu LLC (Case No. 2010-1544) (see my blog post).  Following the reasoning in that case, an invention for which a computer system is integral would surely have qualified  as a practical application of an abstract idea.

Or perhaps the Delegate could have commented on the Australian Patent Office decision Visa Inc v CardinalCommerce Corporation [2011] APO 34 (25 May 2011) (see my blog post) in which the Delegate observed at [97] that the method claims under consideration:
'clearly relate to supporting authentication processing of on-line commercial transactions involving several physical steps in a networked environment. The claims are not directed merely to a scheme.' 
Further steps

I doubt there will be any further steps in this case. It will be interesting to see whether future Delegates will continue this selective approach to the application of United States case law and earlier decisions of  the Australian Patent Office. I think we need more guidance from the Australian Courts.

Photo courtesy of author Victoria Pickering under Creative Commons licence.

Wednesday, December 21, 2011

Research Affiliates knocked back again

Is time running out?In Research Affiliates, LLC [2011] APO 101 (5 December 2011) we see a divisional of Research Affiliates' patent application suffer the same fate as the parent.

The patent application

Australian patent application 2010236045 was filed initially by Robert D. Arnott and later assigned to Research Affiliates (the applicant).  It is a divisional application out of application 2005213293.  The parent application has already been refused in Research Affiliates, LLC. [2010] APO 31 (17 December 2010) (see my blog post).  It is under appeal to the Federal Court.

There were three examination reports issued before the matter was set down for a hearing on 5 December 2011.  I guess it's not really a hearing because the applicant had already advised that it did not wish to be heard.

Method claim 1, for example, reads as follows:

1. A computer-implemented method for generating an index, the method including steps of:
(a) accessing data relating to a plurality of assets;
(b) processing the data thereby to indicate a selection of the assets for inclusion in the index based on an objective measure of scale other than share price, market capitalization and any combination thereof;
(c) accessing a weighting function configured to weight the selected assets;
(d) applying the weighting function, thereby to assign to each of the selected assets a respective weighting, wherein the weighting:
(i) is based on an objective measure of scale other than share price, market capitalization and any combination thereof; and
(ii) is not based on market capitalization weighting, equal weighting, share price weighting and any combination thereof,
thereby to generate the index.

Manner of manufacture

The Delegate concluded at [13] that:
"there is nothing in the claims of the present divisional application that would suggest a different conclusion be reached than was reached for the parent application. The claims of the present application contravene subsection 18(1)(a) for the same reasons as outlined in the parent case."
In fact, the Delegate commented that the current claims are an "even greater contravention" of the manner of manufacture requirement than the parent claims.

Further steps

Presumably this patent application will join the parent application already before the Federal Court.

[UPDATE: Read Research Affiliates and the unpatentable index for a discussion of the Federal Court decision handed down 13 February 2013.]
Photo courtesy of author thinkpanama under Creative Commons licence.

Monday, December 19, 2011

Heritage precinct moves another step closer

Arbor Day - Greytown, New Zealand - July 3, 2010A Combined Wairarapa Planning Committee recently adopted a proposal to extend Greytown’s Historic Heritage Precinct.  The proposal has now moved a step closer with the public notification of the proposal. 

Greytown’s 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.

Only a small part of Greytown’s Main Street has protection as a Historic Heritage Precinct.  In an earlier post I talked about a proposal to extend the precinct a block north and a block south.  On 23 September 2011 the Committee heard from four submitters who generally support the proposal, and one who opposes the proposal entirely.  The Greytown Community Heritage Trust, of which I am chair, was one of the four submitters in favour.

In a decision dated 13 October 2011 The Committee resolved to adopt Plan Change No 4 – Greytown Historic Heritage Precinct Extension.  The decision was publicly notified on 8 December 2011.  Any person who made a submission now has the right to appeal the decision on the proposal to the Environment Court.  Any appeal must be lodged within 30 days of service of the notice of decision.

I think an appeal is unlikely in this case.  So the Plan Change will become operative early 2012.

Photo courtesy of US Embassy New Zealand and author Geoff Walker under Creative Commons licence.

Thursday, December 15, 2011 meets the Canadian Federal Court of Appeal

On 24 November 2011 the Canadian Federal Court of Appeal handed down its decision involving and its 'one-click' patent application.  Like all judgments that are eagerly awaited, it doesn't quite clarify the law to the extent expected, and leaves ample room for interpretation.  The parties have 60 days from the date of the decision to seek leave to appeal to the Supreme Court of Canada.

Click here for a copy of Canada (Attorney General) v., Inc. et al., 2011 FCA 328 (F.C.A.).

Background applied for Canadian patent application 2,246,933 back on 11 September 1998.  The title of the application is "Method and system for placing a purchase order via a communication network".  As noted by Sharlow J.A. at [16], succeeded in obtaining patents of similar scope in the United States, Australia and New Zealand, but not Europe.

I have covered Australia and New Zealand in earlier blog posts.

During examination, the Canadian Commissioner of Patents refused to grant the patent to  The applicant appealed the Commissioner's decision to the Federal Court.  Justice Phelan allowed's appeal, quashed the Commissioner's decision, and essentially told the Commissioner to grant the patent.  The Commissioner did not and instead appealed the judgment to the Federal Court of Appeal.

Purposive construction

The Court observed at [43] that the Commissioner needs to identify the actual invention from a purposive construction of the patent claims.  Not a literal reading of the claims.  Not a determination of the "substance of the invention".

A purposive construction, said the Court at [44], will address patent claims that:
'may be expressed in language that is deliberately or inadvertently deceptive.  Thus, for example, what appears on its face to be a claim for an "art" or a "process" may, on a proper construction, be a claim for a mathematical formula and therefore not patentable subject matter'.
Business methods can be patented

The Court at [60] agreed with Justice Phelan when he observed that there is "no basis for the Commissioner's assumption that there is a 'tradition' of excluding business methods from patentability in Canada."

It observed that "no Canadian jurisprudence determines conclusively that a business method cannot be patentable subject matter".

There are some limits.  The Court noted that:
" does not necessarily follow ... that a business method that is not itself patentable subject matter because it is an abstract idea becomes patentable subject matter merely because is has a practical embodiment or a practical application".
Practical application

Justice Phelan in the lower Court said that a "practical application" requirement ensures that something which is a mere idea or discovery is not patented - it must be concrete and tangible.  This requires some sort of manifestation or effect or change in character.

The Court at [66] agreed with Justice Phelan when he acknowledged that:
"because a patent cannot be granted for an abstract idea, it is implicit in the definition of 'invention' that patentable subject matter must be something with physical existence, or something that manifests a discernible effect or change".
It is true that the nature of the "physicality requirement" may change because of advances in knowledge.  However, the Court noted that the "physicality requirement" cannot be met merely by the fact that the claimed invention has a practical application.  The Court referred to Schlumberger Canada Ltd. v. Canada (Commissioner of Patents), [1982] 1 F.C. 845 (C.A.).  In Schumberger the claims were not saved by the fact the claims "contemplated the use of a physical tool, a computer, to give the novel mathematical formula a practical application".

Further steps

The Commissioner is now directed at [63] to undertake a further purposive construction of the claims, "with a mind open to the possibility that a novel business method may be an essential element of a valid patent claim", rather than the whole invention.

We will wait and see if the Commissioner appeals this one.

Photo courtesy of author ambert under Creative Commons licence.

Tuesday, December 13, 2011

Our relationship with India - the sequel

Milk traders in a market in IndiaOn Thursday 19 May 2011, the Foreign Affairs, Defence and Trade Committee initiated an inquiry into New Zealand’s relationship with India.

The terms of reference for the inquiry are to:
  • Consider trade, tourism, and opportunities including investment.
  • Examine strategic opportunities for both New Zealand and India resulting from new opportunities for engagement particularly flowing from technological innovation.
  • Determine any untapped opportunities for growing the relationship in the areas of science, medicine, defence, education, and culture.
NZIPA written submission

As I mentioned in an earlier blog post, the New Zealand Institute of Patent Attorneys (NZIPA) made a submission to the Committee.  A copy of our submission is available here.

The main points of our submission are that India:
  • does not extend professional legal privilege to our clients
  • provides no data protection for agricultural and medicine related data
  • does not provide copyright protection for three dimensional works
  • requires proof of working of patents
  • cannot adequately manage trade mark applications
Oral submission

In October this year, Tim Jackson and I rocked up to present oral submissions to the Foreign Affairs, Defence and Trade Committee on behalf of the NZIPA.

We didn't have a lot of time to submit so we focussed on the privilege issue.  I can't say how our submission was received.  But I can say that I've seen the same reaction at a fancy dress party when the only one in fancy dress turns up.

Hon Pete Hodgson raised the fact that our Patents Act doesn't reciprocate rights that India already grants.  I pointed out that our Patents Act dates back to 1953.  It has been under review since 1989.  And there is a current Bill on the Parliamentary Order Paper.

Dr Paul Hutchison asked what the point was of Indian intellectual property.  Fisher & Paykel (Appliances or Healthcare - not sure which) and Rakon just get copied.  In answer I said that India has stronger IP laws than we have in our proposed Patents Bill.  One example is our proposed approach to patent protection for computer implemented inventions.

Committee report

The Report is now out and is available here.

It is good to see that the Committee has been made aware "that there are many opportunities for New Zealand to engage with India in science and innovation, particularly in areas such as pharmaceutical research, food technology, agricultural and horticultural science, and ICT".

Unfortunately, it seems that such opportunities will need to be pursued within the existing legal frameworks of the respective countries.

The Committee recommendation is simply that "the Government assist the New Zealand business community in pursuing opportunities for trade with India in ICT, creative industries, aviation, engineering, science and innovation".

Photo courtesy of author ILRI under Creative Commons licence.

Monday, December 12, 2011

Supreme Court considers patent eligibility in Mayo v Prometheus

US Supreme CourtThe latest AIPLA Direct e-mail newsletter contains a good summary of a recent oral argument at the US Supreme Court.  The full transcript is available here.  The Supreme Court is once again musing over what subject matter should be patent eligible.


On 7 December 2011 the Supreme Court heard oral argument in Mayo Collaborative Services v. Prometheus Laboratories, Inc., U.S. No. 10-1150, 12/7/2011.

Prometheus sued Mayo for infringing its patent on a diagnostic method for treating Crohn's disease.  The claims in this case recite steps for optimising the effect and reducing the toxicity of medicine by “determining” the level of certain metabolites created by taking a particular drug. They state that a level less than about 230 “indicates” a need to increase the medicine, and that a level greater than 400 “indicates” a need to decrease the medicine.

The Federal Circuit found the claims patent eligible in 2009 pre-Bilski and again in 2010 post-Bilski.

Law of nature

Justice Breyer observed that you can't patent a law of nature, but you can patent an application of a law of nature.  He asked counsel for Mayo why the administration of a drug and the determining of the resulting level wasn't an application of a law of nature. Mayo answered that the mere observation of a natural result does not add enough for it to be more than a claim to the existence of the natural result.

How much more must be added for the claim to be an “application” of a law of nature, asked Justice Breyer.

A conventional step is not enough, replied Counsel for Mayo.  Justice Scalia pointed out that focus on a “conventional step” would be the analysis for finding lack of novelty. Justice Ginsburg asked why Mayo did not challenge patentability in this case under the novelty or nonobvious requirements of the statute.

Leave 101 alone

The Solicitor General, appearing as amicus curiae for the United States, agreed that a mental step may not be patented by tacking on an utterly conventional process for administering drugs and testing their effects.

However, this is an issue of novelty and nonobviousness, he argued, adding that importing these considerations into the Section 101 analysis would be destabilising to the patent system. As stated in Bilski, patent eligibility is a threshold eligibility question, and the test is whether the claim recites a process.

Novelty and Obviousness well settled

The Chief Justice asked why it is beneficial to essentially eliminate Section 101 consideration and fall back on Sections 102 and 103. Counsel for Prometheus explained that issues of novelty and nonobviousness are governed by well-established rules, and that using Section 101 to reject patents where the issue is really novelty and nonobviousness would overlook those important rules.

Further steps

We await with interest the final decision from the Supreme Court.

Photo courtesy of author Mark Fischer under Creative Commons licence.

Tuesday, December 6, 2011

IP Australia introduces uncertainty

Found Words: Question MarksIP Australia has granted patents for computer-implemented inventions for two decades.  However, in the last 18 months we have seen IP Australia introduce some uncertainty as to the extent to which computer implementation results in patentable subject matter.

Statutory definition

The Australian Patents Act 1990 is silent on the patentability of computer-implemented inventions.  Section 18(1) states that one of the requirements an invention must satisfy to be a patentable invention is that it must be a “manner of manufacture within the meaning of section 6 of the Statute of Monopolies”.

Judicial interpretation

An Australian Court in International Business Machines Corporation v Commissioner of Patents [1991] FCA 625; (1992) 22 IPR 417 held that a computer program was a new application of selected mathematical methods to computers.  The techniques presented curve images in computer graphics displays.  The Court held that there was nothing new about the mathematics of the invention.  What was new was the application of the selected mathematical methods to computers and in particular to the production of the desired curve by the computer.  The technique was said to involve steps that are foreign to the normal use of computers.  The production of an improved curve image was held to be a commercially useful effect in computer graphics.

The Federal Court of Australia held that a smartcard-based trader loyalty program was patentable in Welcome Real-Time S A v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110.  The Federal Court judge said:
“What is disclosed by the patent is not a business method… for example a manufacturer appointing wholesalers to deal with particular categories of retailers rather than all retailers in particular geographical areas…Rather, the patent is for a method and a device, involving components such as smartcards and POS terminals in a business…”. 
Heery J in this case distinguished between an abstract idea (such as a method of calculation or a method or scheme for carrying on business which is not patentable) and a practical operation of an abstract idea (such as a method and device for use in business which is patentable.  His Honour drew a distinction between a technological innovation and a business innovation.  A physically observable effect was not necessary but was present in this case.

In Grant v Commissioner of Patents [2006] FCAFC 120 (18 July 2006) the Federal Court of Australia considered the patentability of a method to protect assets from unsecured judgment creditors.  The claimed method involved establishing a trust, giving money to that trust, borrowing from the trust and the trustee securing the loan by taking a charge for the money over the asset.  The Court found the claims not patentable.

The Court made it clear that it was not refusing the claims because they related to a business method.  Patentability of claims needed to be considered by applying the principles that have been developed for determining whether a method is a manner of manufacture, irrespective of the area of activity in which the method is to be applied.

The Court observed that the patent:
“does not produce any artificial state of affairs, in the sense of a concrete, tangible, physical, or observable effect ... In Catuity and CCOM as in State Street and AT&T, there was a component that was physically affected or a change in state or information in a part of a machine. These can all be regarded as physical effects. By contrast, the alleged invention is a mere scheme, an abstract idea, mere intellectual information, which has never been held to be patentable, despite the existence of such schemes over many years of the development of the principles that apply to manner of manufacture. There is no physical consequence at all.”
Patent office practice

The claims most commonly allowed in Australia include:
  • method claims
  • apparatus claims
  • computer-readable medium software claims (Beauregard claims)
  • data structure claims (Lowry claims).
In a post-Bilski era, there is some uncertainty involving method claims and the extent to which mere computer implementation results in patentable subject matter.  There is a procedure in Australia in which a Delegate of the Commissioner of Patents reviews ex parte appeals from the adverse decisions of examiners and resolves inter partes oppositions.  This procedure has seen some use over the last 18 months.

In Invention Pathways Pty Ltd [2010] APO 10 (21 July 2010) a method for commercialising inventions was refused despite the claims including a data file maintained in data storage means.  The Delegate held that a patentable physical effect must be central to the purpose or operation of the claimed process or otherwise arise from the combination of steps of the method in a substantial way.  The physical effect has to be more than peripheral and subordinate to the substance of the claimed invention.

Patent applications have since been refused in:
  • Iowa Lottery [2010] APO 25 (21 October 2010)
  • Research Affiliates, LLC [2010] APO 31 (17 December 2010)
  • Myall Australia Pty Ltd v RPL Central Pty Ltd [2011] APO 48 (12 July 2011)
  • Discovery Holdings Limited [2011] APO 56 (9 August 2011)
  • Network Solutions, LLC [2011] APO 65 (19 August 2011)
  • Jumbo Interactive Ltd & New South Wales Lotteries Corp v Elot, Inc [2011] APO 82 (28 October 2011)
On the other hand, in Visa Inc v CardinalCommerce Corporation [2011] APO 34 (25 May 2011), a patent application relating to a universal merchant platform for payment authentication was found to involve patent-eligible subject matter.  The Delegate held that the method claims clearly relate to supporting authentication processing of on-line commercial transactions involving physical steps in a networked environment.  The claims were held not to be directed merely to a scheme and did in fact relate to a manner of manufacture.

Photo courtesy of author rosefirerising under Creative Commons licence.

Sunday, December 4, 2011

Taking on the taxman

iF: Tax ManWe recently saw the close of another chapter in what a Judge described as "already extensive litigation" between New Zealand patent attorney John Hardie and the taxman.  I'm no tax expert, but I doubt that claiming Maori descent is an excuse for not paying tax.


The saga began on 16 June 1998 when Hardie was convicted in the District Court of seven failures to file income tax returns for the years ended 31 March 1991-1997.  He was later convicted on 20 June 2000 of two further failures for the years ended 31 March 1998-1999.

He also failed to make GST (Goods and Services Tax) for the monthly periods ended 31 March 2003 - 30 April 2006.

In August 2002 the Commissioner obtained orders in the District Court requiring Hardie to file income tax returns for the years ended 31 March 1998 - 2001, and GST returns for the period February 2001 - April 2002.  Hardie didn't comply.

In September 2006 the Commissioner obtained judgement by default in the District Court for Hardie's tax liability.  The amount was an eye-watering $10,341,590.32.  This amount included actual tax, penalties and interest.

Hardie applied to have the judgment set aside.  The District Court instead confirmed the judgment in March 2009.  The judgment was almost wholly upheld by the High Court in March 2010.  Hardie was declined leave to appeal further.

While all this was going on, Hardie brought an application for judicial review in June 2007.  That process is described as taking a "protracted course complicated by his serial failures to comply with directions".  He discontinued the application in June 2008 the day before it was due to be heard.

On 23 December 2010 the High Court struck out Hardie's second application for review.  In Hardie v Commissioner of Inland Revenue HC Auckland CIV 2010-404-1453 [2010] NZHC 2339 (23 December 2010), Keane J observed that the application for review constituted an abuse of process.

Hardie appealed.  On 28 September 2011 the Court of Appeal allowed Hardie's appeal.  The order striking out the application for judicial review by the High Court was set aside.  In Hardie v Commissioner of Inland Revenue [2011] NZCA 492 (28 September 2011), according to an IRD case note, the Court confirmed that a default assessment must not be arbitrary, disregard the law or known facts and must be a genuine attempt to ascertain the taxable income.

It's clear that Hardie and the IRD are going to be arguing for some time about the default assessment.  What is more interesting about this case are the submissions already put forward by Hardie.

Maori don't need to pay tax

Stevens J in Hardie v Commissioner of Inland Revenue HC Auckland CIV 2009-404-1785 [2010] NZHC 412 (19 March 2010) comments at [15] that "[t]he flavour of the appellant’s defence can best be ascertained from a helpful distillation of arguments, described by [District Court] Judge Recordon as 'extremely difficult to comprehend'."

One of those submissions is that "[a]s a person of Maori descent, he is not obliged to pay tax under the Treaty of Waitangi".  Counsel for the IRD noted that the appellant had not provided evidence of his whakapapa (genealogy or lineage) establishing on the facts that he is of Maori descent.

The Judge disposed of Hardie's argument pretty quickly, observing at [27]:
Quite apart from this evidential difficulty, the appellant’s submission is legally flawed. Moreover, the appellant put forward no authority binding on this Court to support his extraordinary submission. The District Court Judge was quite correct when he concluded that the Courts have never accepted arguments that statutes passed by Parliament are not applicable to persons of Maori descent. This is particularly so in the case of obligations to pay tax. Such obligations arise under the legislation imposing taxes and axiomatically apply to all New Zealanders, irrespective of race. The exemption claimed by the appellant on the basis of Maori descent cannot succeed.
Others have gone further than describing this argument as "legally flawed" and "extraordinary".  I have seen it described as without merit [17], a non-starter, and patent nonsense.

Hardie later complained [9] to the Court that:
[t]he public release of said judgment has created intense diversionary time pressure on the Applicant since early Friday 16th April to defuse a publicity situation which, as predicted by the Applicant, has had severe adverse repercussions for others not responsible for, nor necessarily in agreement with, the views of, and/or the actions of, the Applicant.
The dog ate my homework

Hardie acknowledges [9-11] that he has not filed the relevant tax returns during the periods for which the IRD issued default tax assessments.  The Judge notes at [12] that:
[a]s a result, the Commissioner was left with no option but to proceed to make default assessments. This is because, having failed voluntarily to file tax returns, the appellant left himself open to default assessments being made by the Commissioner. Once the assessments had been made, the appellant failed to take advantage of the statutory procedures for challenging such assessments.
So why didn't Hardie challenge the assessments using the statutory procedures available to him?

He would later plead [32] that the statutory procedures "required him to furnish returns before he could do so.  He was unable to because his financial records were neither complete nor accurate".

The Intellectual Property Office of New Zealand (IPONZ) maintains a database of patent applications.  The database lists 11 national phase entry patent applications filed this calendar year naming J D Hardie and Co as Contact.  In each of those cases NZMarks Ltd is recorded as the Service Address.

The Companies Office lists individual Mark Lawton as sole director of NZMarks Limited.  Lawton is a professional accountant whose website announces that his company Accplus
"can prepare annual and/or interim accounts for your business. As registered Tax agents we can help your business stay compliant with the Inland Revenue Department. We can prepare and e-file your required taxation returns including GST, PAYE, FBT and Income tax returns."
The position is perhaps best summed up at [35] by Keane J who admitted to being:
"sceptical about Mr Hardie's claim that he was unable to invoke the statutory procedure because he was unable to file returns. The manner in which he has contested his tax liability in debt, and his first review application, suggests rather that he has been intent on deflecting any assessment and delaying any liability".
Further steps

There are a few more procedures to go through while Hardie and the IRD argue about the default assessment.  At some point even Hardie is going to run out of legal options.  He will then need to pay up (if he is able) or declare himself bankrupt (if he is not).

Photo courtesy of author H. Michael Karshis under Creative Commons licence.

Tuesday, November 29, 2011

Commercialising Innovation to Save the World

 It’s well known that when something sounds too good to be true, it usually is.  Well, not always.

The International Licensing Executives Society is holding its annual conference in Auckland, New Zealand.  It runs from Friday 30 March to Wednesday 4 April 2012.

It is always a good time to visit New Zealand.  It is particularly nice at that time of the year.  There is often a late summer gradually giving way to a mild autumn.

The theme for this year is on how innovation might be commercialised to “save the world” from threats such as disease, poverty, food shortages, over-population and environmental destruction.

Should be a good conference.

Monday, November 28, 2011

KOHA: All's well that ends well

The gift of rust
Last week we saw a breathless press release announcing that a "small New Zealand library is fighting to keep its trademark [sic] free software from the clutches of a United States corporation".  Joann Ransom of the Horowhenua Library Trust is "astounded an international company could trademark [sic] a Maori word".

Dannevirke librarian Michael Parry goes further, stating that the company "have also sort sought [sic] to claim ownership of the name Koha ... we have the ridiculous situation that they will deny the very people who originally developed Koha the right to use that name. What is even more stupid is that the Maori Advisory Board to the Trademarks [sic] people has approved this. Yep, they are happy to give a Te Reo term to a US company as a trademark [sic]".

The Horowhenua Library Trust

The Trust claims to be incorporated under the Charitable Trusts Act 1957, although there is no record of the Trust on the Charities Register maintained by the Charities Commission*.  It has a close relationship with the Horowhenua District Council.  According to the Trust's frequently asked questions, the Council funds 85% of the Trust's operation and appoints the Trustees.

On 17 April 2010 the Trust applied for New Zealand trade mark application 822685 KOHA for computer software.  Its attempt to secure trade mark protection was unsuccessful.  The application lapsed on 12 October 2011.

The Trust, and by extension the Council, is associated with a loosely defined group known as the "Koha community".  The Committee rules define Koha Community, Koha Software and Koha Project.  You can find out more on the site


According to its company profile, LibLime was founded in 2005.  In 2007 it acquired the KOHA division of Katipo Communications Limited.  Katipo, according to LibLime, originally created Koha for the Horowhenua Library Trust in New Zealand.  In 2008 LibLime closed its New Zealand office, providing support for its customers in that region through its US operations.  In March 2010 it was acquired by Progressive Technology Federal Systems (PTFS).  Check out for more details of LibLime.
On 15 February 2010 PTFS/LibLime filed New Zealand trade mark application 819644 KOHA for computer software.  The Intellectual Property Office of New Zealand (IPONZ) approved the trade mark for registration on 8 November 2011.  There is now a three month opposition period that started on 25 November 2011 during which interested parties can challenge registration.
On 23 November 2011 PTFS/LibLime issued a press release stating that:
"Another one of the assets acquired in the purchase of LibLime was an application for the trademark of the term Koha as it applies to ILS software in New Zealand. That application has now been accepted. PTFS/LibLime will hold that trademark in trust as well, and will not enforce it in order to insure that no individual, organization, or company will be prohibited from promoting their services around Koha in New Zealand.
PTFS/LibLime is prepared to transfer the trademark to a non-profit Koha Foundation with the provision that the Foundation hold the trademark in trust and not enforce it against any individual, organization, or company who chooses to promote services around Koha in New Zealand. PTFS/LibLime encourages a direct dialog with Koha stakeholders to determine an equitable solution for the disposition of the trademark that serves the best interests of the libraries who use Koha."
The next day a staff member from PTFS/LibLime confirmed that the company will "hand the NZ trademark off to a non-profit (including HLT) who agrees to continue our practice of protecting non-exclusive use of the name".

The response from the Koha Community

A posted comment from a "Dave" proudly announces he has been in contact with PTFS/LibLime.  He didn't like the reply he received so he sent another.  He encourages other members of the Koha Community to do the same. His reply:

On the News tonight in NZ.
You’re company really knows how to shaft the originator of the project.
You guys ever thought of becoming political lobbyist? from my knowledge of the American Lobbyiest community you’d fit in well, build a support base around an issue then claim it as you’re sole property.
great going.
Hope the NZ Govt gets hell over this (we’re leading up to an election in this coming Saturday Te he).
you’re application should never have been allowed. Do you even know what Koha means in Maori?
you’ll have all the Maori up in arms with the trademarking of a word that simply means in english “free” or “of no charge”.
No wonder America is so villified in parts of the world, you’re society has an arogance that defies belief and yet I aknowledge that as a society is very giving (YES I LIVE IN CHCH NZ) gone through all the earthquakes from Sept last year etc and appreciate the support of the Urban rescue group that came out here to help.
I hope that you’re company rethinks things and withdraws the trademarking of the word (unless you gift the trademarking in what ever markets you have obtained them to the originating Library which would give you kudos in the OSS arena and would avoid further bad press).
I can see this going on youtube and through the larger OSS community as well.
Another member of the Koha Community identies himself as "Rangi".  He says "what needs to be done is some research on Liblime’s client base, find out who the clients are and send them letters outlining what they have been up to. Target the big clients and work down. This would be cheaper than any legal action".

Are the responses from Dave and Rangi examples of behaviour we would expect to see endorsed by a "small New Zealand library" and its associated Howowhenua District Council?  Of course not.  It's not about them at all.  But it gives some good insights into the mentality of the Koha Community.

So what's all the fuss about?

As I mentioned above, Michael Parry claims that PTFS/LibLime "will deny the very people who originally developed Koha the right to use that name". This statement is hard to reconcile with PTFS/LibLime's pledge not to enforce the trade mark, and to transfer it to an appropriate entity.

The Horowhenua Library Trust is hardly in a position to object to commercial use of Maori words. It incorporates at least one such word in its name and branding. Furthermore, the Trust filed its own trade mark application for KOHA, so can't complain when others "trademark a Maori word".

The real dispute here is over who should own the KOHA trade mark in New Zealand. The participants are two competing factions within the open source community that have fallen out with each other.  So now it's simply a matter of sorting out who will own the mark and under what conditions.  All's well that ends well.

The image of the little Kiwi library fighting the big US corporate makes a better story but doesn't fit the facts.

* Update 29/11/11 - Thanks to Joann Ransom for pointing out that the Horowhenua Library Trust is the trading name of Te Horowhenua Trust.  The Charities Commission entry for Te Horowhenua Trust can be viewed here.  The Registration number is CC20328.

Photo courtesy of author Tom Beard under Creative Commons licence.

Wednesday, November 23, 2011

Guest post: How the KOHA trade mark dispute could've been avoided

The gift of rust
Thanks to Lynell Tuffery Huria for this article.

Twelve years ago, a Horowhenua library developed its own cataloguing software, brand name KOHA, and released it as open source software, available for others to use and develop around the world.  The Horowhenua library did not protect the brand name KOHA as a trade mark.  A US company has now applied to register the word KOHA for computer software.  Now the library faces a battle to oppose this application.

Can the Horowhenua library stop the US company from registering the trade mark KOHA?  The short answer is yes.  The Horowhenua library has prior use of the trade mark KOHA in New Zealand, and there is a good chance the library could successfully oppose the application.  But this process is costly.  And now the library is raising funds to oppose the application.

How can a US company obtain a trade mark for a Māori word in New Zealand?  Our trade marks legislation does not have a blanket provision that prevents the registration of Māori words in New Zealand.  Instead, a trade mark that features Māori words can only be refused if the use of the trade mark is offensive.  The Māori trade marks advisory committee is responsible for deciding whether a trade mark is offensive or not.  In this case, the trade mark KOHA was obviously not considered offensive.

What could the library have done to avoid this situation?  The library could have registered its trade mark when the product was first released.  For a fee of $100 plus GST, this trade mark application would have stopped the US company’s application and avoided this situation altogether.

What can others learn from this issue?  Before you use a trade mark, make sure you can and do obtain registered trade mark protection.  This will place you in a strong position to stop others from adopting your trade mark.

Photo courtesy of author Tom Beard under Creative Commons licence.

Tuesday, November 22, 2011

Taking out the trash

“See, I told you he had a real gun”, the older of our boys said to his younger brother.  The three of us were huddled around the kitchen table.  Looking with not a small amount of awe at my Escort Magnum semi-automatic shotgun laid out before us.

In my last post on this topic I said we had decided to load the dice and get rid of Horace the rooster’s tormentors.  The boys were comfortable with the concept of getting rid of “naughty” animals.  Our daughter wasn’t so impressed.  But this wasn’t a time for compassion.  If we didn’t shoot Horace’s sons then they would kill him.  Simple as that.  We had made our choice.

My wife and I stepped out into the driving rain, shoulder to shoulder, feeling very much like the marshall and his deputy.  Ready to face whatever those chickens had for us.  It was one of those unreal situations.  Our daughter upset in her room.  The two boys watching wide eyed from inside the house.  Their faces pressed against the window pane.

It didn’t take very long at all.  We chased the flock around like a couple of geriatric sheep dogs.  Separated them enough so I could draw a bead on a rooster.  Then kabam!

The usual procedure if you are a rooster and you are hit at close range with #3 steel shot is to leap a metre in the air and land in a feathery heap.  Which is exactly what they did.  After seeing their alpha males destroyed in front of the their eyes, some of the hens crawled as far as they could into the buxus hedging.  Just like Horace did a while back.  I wonder why?

It took the flock a while to recover after that.  The hens were a bit slow laying for a week or so.  And Horace was still pretty quiet.  Maybe he didn’t want to crow too loudly in case the other roosters heard him.  We knew he had nothing to worry about.  Sure enough, after a week or two he was back in the saddle.  Strutting around proudly.

Everything back to normal at last.

Wednesday, November 16, 2011

Protecting kids the world over - with patents

internetSafety ghostIn Protecting Kids the World Over (PKTWO) Ltd [2011] EWHC 2720 (Pat) (26 October 2011) we see a successful appeal by an applicant for a patent application relating to the patentability of computer programs as such.

The patent application

UK Patent Application GB 0723964.3 was filed by Protecting Kids The World Over (PKTWO) Limited.  The application relates to a system for monitoring the content of electronic communications to ensure that children are not exposed to inappropriate content or language.

Claim 33, dependent on claim 20, was directed to a data communications analysis engine.  The engine "packet sniffs" data packets from a communications channel for further analysis of their content. The data packets are then monitored using a sequence of "hash tables" which assign a score to the data packet depending on the expressions found in the data packets. An aggregate alert level is assigned to the packet. The aggregate alert level is passed to a security warning algorithm which generates an alert notification to users. There is then a "request and response engine" for sending a notification to an administrator/user such as a parent and for receiving a response from the administrator/user comprising one of several actions to be taken by the computer.

The actions to be taken by the computer include one of (a) alerting a user, (b) terminating the electronic communication on the channel or (c) shutting down the equipment. What is envisaged is that the computer will send the alert notification, in effect an alarm, to a parent by email or SMS message. The parent will be able to send a remote response command of one of the specified types and the computer will respond accordingly.

Relevant technical effect

The Hon Mr Justice Floyd referred to the relevant legislation, section 1(2) of the Patents Act 1977 and Article 52 of the European Patent Convention on which it is based.

He set out the four step approach from Aerotel v Telco/Macrossan's Patent Application [2007] RPC 7, where the exclusions from patentability were engaged:
  1. properly construe the claim
  2. identify the actual contribution;
  3. ask whether it falls solely within the excluded subject matter;
  4. check whether the actual or alleged contribution is actually technical in nature
Identifying the actual or alleged contribution for the purposes of steps 2, 3 and 4:
"…is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended."
In Symbian v Comptroller-General [2009] RPC 1[2008] EWCA Civ 1066 the Court of Appeal declined to formulate any "bright line" test for what did and for what did not amount to a technical contribution in this field. Each case had to be decided by reference to its own particular facts and features, bearing in mind the guidance given in the decisions mentioned.

In ATT&T Knowledge Ventures [2009] [EWHC] 343 Pat, Lewison J agreed that it was impossible to define the meaning of "technical" in this context but considered that there were a number of signposts to what amounted to a relevant technical effect. These are:
  • whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
  • whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
  • whether the claimed technical effect results in the computer being made to operate in a new way;
  • whether there is an increase in the speed or reliability of the computer;
  • whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

In Gemstar-TV Guide International inc v Virgin Media Ltd [2010] RPC 10[2009] EWHC 3068 (Ch), Mann J considered a patent related to a means of controlling the transfer of recorded programmes to a secondary recorder such as a VCR, hard disc or like means.  It was observed that "it does actually achieve something which can be regarded as a physical effect, namely the initiation of movement of data from one disk to another (both metadata and TV programme content)."  Thus the initiation of the movement of data, even if occurring within the computer, may be a relevant effect.

Coming back to the present case, Floyd J observed that:
"the programming of a computer is a technical exercise, and the consequence of so programming it can, again in ordinary language, be regarded as achieving a technical effect. It is therefore the case that in applying the exclusion one is seeking to distinguish a relevant technical effect from one which is irrelevant. An invention which has none of the signposts referred to in Lewison J's judgment is unlikely to involve a relevant technical effect."

What does it do?

Floyd J cited with approval the reasoning of HHJ Birss QC in Halliburton Energy Services' Inc's Application [2011] EWHC 2508 (Pat) (see my blog post), that:
“[t]he question is decided by considering what task it is that the program (or the programmed computer) actually performs.  A computer programmed to perform a task which makes a contribution to the art which is technical in nature, is a patentable invention and may be claimed as such”.
He went on to observe that “I think this reflects the formulation of Jacob LJ in Aerotel at [43], as well the oft-repeated injunction to have regard to the invention “as a whole”: see Vicom T028/84, approved in Symbian at [37].”

Solving a technical problem

The contribution made by claim 33 was held to include the generation of a more rapid and reliable alarm notification.  The particular alarm notification as described and claimed in claim 33 was not known and formed part of the contribution to human knowledge made by the application.

An alarm alerting the user, at a remote terminal such as a mobile device, to the fact that inappropriate content is being processed within the computer was found to be a technical process.  The concept was a physical one rather than an abstract one, akin to Gemstar described above.  The effect, viewed as a whole, is an improved monitoring of the content of electronic communications.  The monitoring was technically superior to that produced by the prior art.  There was present the necessary characteristics of a technical contribution outside the computer itself.

The contribution of the claim was found not to reside wholly within the "computer program as such" exclusion.  This fitted with the AT&T signposts.  The invention was observed to solve a technical problem lying outside the computer, namely how to improve on the inappropriate communication alarm generation provided by the prior art.

Further steps

The appeal was allowed.  The case was remitted back to the UK Intellectual Property Office to deal with other outstanding objections.

Photo courtesy of author Paul Klintworth under Creative Commons licence.

Friday, November 11, 2011

Research Affiliates and the passive investing patent

Is time running out?In Research Affiliates, LLC. [2010] APO 31 (17 December 2010) we saw yet another Australian patent application kicked out for lack of patentable subject matter.

The patent application

The invention involved a method, system and computer program product for passive investing that was based on indexes which are built with metrics other than market capitalization weighting, share price weighting or equal weighting.

Australian patent application 2005213293 was originally filed on 27 January 2005 and later assigned to Research Affiliates (the applicant).  There were 5 examination reports issued before the matter was set down for a hearing on 29 October 2010.

Claim 1 read as follows:

1. A method of constructing data indicative of a non-capitalization weighted portfolio of assets, the method being implemented in a computer system having at least one computer processor, the method comprising:

(a) receiving in the computer system data gathered in regard to a plurality of assets;

(b) receiving data indicative of a selection of the plurality of assets to create data indicative of an index of assets, wherein said selection is selected based on an objective measure of scale other than market capitalization and share price; and

(c) operating the processor thereby to weight each of said plurality of assets selected in the index based on an objective measure of scale of said each of said plurality of assets,

wherein said weighting comprises:

(i) weighting at least one of said plurality of assets; and

(ii) weighting other than weighting based on at least one of market capitalization, equal weighting, or share price weighting.
Applicable law

The Delegate ran through the usual cases dealing with patentable subject matter.  These included National Research Development Corp (NRDC) v Commissioner of Patents [1959] HCA 67; [1959] 102 CLR 252, referred to in CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168, as requiring “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”.

He referred to International Business Machines Corporation v Commissioner of Patents [1991] FCA 625, Welcome Real-Time SA v Catuity Inc [2001] FCA 445, and of course Grant v Commissioner of Patents [2006] FCAFC 120.

The inventive concept

The Delegate acknowledged the statement in Grant that "the fact that a method may be called a business method does not prevent it being properly the subject of letters patent".  He then appeared to decide that the invention was an investment scheme and reject it on that basis.  It doesn't seem to matter much what the applicant actually claims.  It is what the specification as a whole describes.  Apparently.

Citing a case from the 1950's, Re Virginia-Carolina Chemical Corporation’s Application (1958) RPC 35, he concluded that "the application disclosure should be considered as a whole and care should be taken not to allow the form of words used in a claim to cloud the real issue of manner of manufacture."

A physical effect

The applicant argued, citing Grant, that the current test for patentable subject matter is that there must be some “useful product”, some physical phenomenon or effect resulting from the working of a method.  A change in state or information in a part of a machine can be regarded as a physical effect.

The application met the requirements, said the applicant, because the creation of data indicative of an index of assets provided the change in information in a part of a machine.

One of the most extraordinary statements in this decision is where the Delegate says that the Grant decision “needs to be read in context”.  In my view, various Delegates of IP Australia could be accused of developing their own unique context within which to read Grant.  He goes on to say:
“That passage cited a number of examples from decided cases that could be regarded as physical effects in contrast to a specific example, the Grant application, where there clearly was no physical effect. At that passage, it was also stated the alleged invention in that case is a mere scheme, an abstract idea, mere intellectual information, which has never been held to be patentable … [T]he Court appeared to be critical of the absence of any physical consequence at all … [I]t has long been accepted that intellectual information, a mathematical algorithm, mere working directions and a scheme without effect are not patentable (my emphasis).”
The Delegate goes on to state, according to Grant, that there must be some physical phenomenon or effect resulting from the working of a method.  He refers to that old staple of Australian patent law,  Invention Pathways Pty Ltd [2010] APO 10 (see my blog post).  He says that Invention Pathways suggests "a physical effect that is peripheral and subordinate to the substance of the claimed invention is not enough".

He concludes his formulation of his test by saying:
"I think all of the above indicates that a change in state or information in a part of a machine, on its own, is not enough. There may well be a physical effect. Mere working directions would in the main also seem to have a physical effect. See for example Rolls-Royce Ltd’s Application (1963) 80 RPC 251. On the other hand, the Grant (supra) decision states that mere working directions are not patentable. Similarly a prize pool and method of paying prizes, also seemingly having physical effects on the face of it, were also found to be not patentable. See Iowa Lottery [2010] APO 25 [see my blog post]. 
Clearly something more substantial is required than just any physical effect." 
Lack of physical effect

The Delegate acknowledged that the claims encompassed a physical effect, referring to the "derivation or manipulation of data ...  There is processing that occurs, or construction of data as is claimed".

The issue, said the Delegate, is whether there is "sufficient physical effect ... for example, material advantage or mechanical effect in the arrangement of information."

He observed that there is "no material advantage or mechanical effect evident in any arrangement of information in the present case".  He concluded that:
"the claimed method of constructing data amounts to merely the presentation of information without anything more substantial apparently required than data selection and manipulation to operate the investment scheme."
System claims

The applicant argued that some of the claims were not defined as methods.  Therefore it was "entirely inappropriate and nonsensical to apply jurisprudence regarding the patentability of method claims to these non-method claims."

The Delegate didn't accept this, observing that:
"it seems incongruent to divorce system, device or apparatus claims wholly from method claims ... [A] claim to a computer characterised wholly by the features of a method without the requisite physical effect, or any other non-patentable method, would not be saved merely by the presence of a computer. The same would appear to hold for a storage medium characterised wholly by storing instructions to execute a non-patentable method."
Further steps

The Delegate refused all claims, including method, system and computer program product claims as not encompassing a manner of manufacture.  He gave the applicant no opportunity to present amendments.

The applicant has since filed an appeal on 7 January 2011 to the Federal Court.

[UPDATE: Read Research Affiliates and the unpatentable index for a discussion of the Federal Court decision handed down 13 February 2013.]

Photo courtesy of author thinkpanama under Creative Commons licence.

Wednesday, November 9, 2011

A failed conspiracy

Fireworks #1
Another Guy Fawkes night has been and gone.  It’s a slightly odd ceremony we have carried over in New Zealand and Australia from our history as British colonies.

The origins of Guy Fawkes are found in 1605 involving a failed conspiracy known as the “Gunpowder Plot”.  The object of the Gunpowder Plot was to blow up the English Parliament and the ruling monarch King James I.  Guy Fawkes and his conspirators were arrested before the plan could be carried out, intended to be on 5 November 1605.

So, more than four centuries later, many of us celebrate the failed plot by lighting bonfires, burning effigies of Guy Fawkes (or the villain of the day), and letting off fireworks.  Many people attend organised fireworks displays.  Others stage their own displays at home.

Every year there is the usual debate about whether fireworks should be sold to the public.  Every year there are reported injuries from burns, lacerations, bruising and foreign objects landing in eyes.  Over the years we have seen a gradual restriction in the selection and potency of fireworks on sale.  We have seen age restrictions imposed.  This year fireworks were only available for sale on the four days leading up to 5 November.

I expect there will come a time when organised public displays are all the entertainment on offer.

Many of us still enjoy getting together with friends on what is usually a mild late spring evening.  We barbeque home-raised beef and lamb and sip local wine.  We wait for nightfall and the opportunity to light our own fireworks with only slightly less anticipation than our children.  I guess we should enjoy it while we still can.

Photo courtesy of author Harold Neal under Creative Commons licence.

Monday, November 7, 2011

Jumbo Interactive – the house wins again

The LotteryIn Jumbo Interactive Ltd & New South Wales Lotteries Corp v Elot, Inc. [2011] APO 82 (28 October 2011) we see two opponents successfully oppose a patent application.  What is interesting is that they failed on every ground other than lack of patentable subject matter.

The Delegate has given Elot 60 days (to 28 December 2011) to propose suitable amendments addressing the ground that the claims do not define a manner of manufacture.

The patent application

Elot, Inc (the applicant) filed patent application 2007221934 as a divisional application on 10 October 2007.  The application was advertised accepted on 2 April 2009 and opposed in June 2009 and July 2009.  The controversial decision in Invention Pathways Pty Ltd [2010] APO 10 (21 July 2010) (see my blog post) was still a few months away.

There were 4 claims under consideration.  Independent claim 1 and three dependent claims.  Claim 1 read as follows:
1. A system for facilitating governmental lottery play over an electronic network comprising:
an agent server connected via said electronic network for receiving player and ticket information, including subscription play information, transmitted from a plurality of player terminals, for transmitting said ticket information to a governmental lottery administrator, and for receiving serial numbers issued by said governmental lottery administrator in association with each lottery ticket;
a database in said agent server for storing said player and ticket information and said serial numbers associated with each lottery ticket; and
a subscription play unit for monitoring subscription play of the same lottery numbers for a specified number of draws.
Incidental to the invention

Opponents Jumbo and NSWLC submitted that the claims were not directed to a manner of manufacture as they were directed to a non-patentable method.  They submitted that the implementation via a computer did not make it a manner of manufacture as the computer was incidental to the method.

The Delegate noted that the High Court in National Research and Development Corporation v Commissioner of Patents [1959] HCA 67; [1959] 102 CLR 252 provided a definitive statement of the law on manner of manufacture.  This has been summarised as a requirement for ‘a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the fields of economic endeavour’ (CCOM Pty Ltd v Jiejing [1994] FCA 1168).

In Grant v Commissioner of Patents [2006] FCAFC 120 the Court found that a method of protecting an asset including steps of establishing a trust, making a gift to the trust, making a loan from the trust and securing the loan was not a manner of manufacture.  The Delegate referred to the often-quoted conclusion:
‘Whether the method is properly the subject of letters patent is assessed by applying the principles that have been developed for determining whether a method is a manner of manufacture, irrespective of the area of activity in which the method is to be applied. It has long been accepted that "intellectual information", a mathematical algorithm, mere working directions and a scheme without effect are not patentable. This claim is "intellectual information", mere working directions and a scheme. It is necessary that there be some "useful product", some physical phenomenon or effect resulting from the working of a method for it to be properly the subject of letters patent. That is missing in this case.’
The Delegate acknowledged that claim 1 included an “agent server” which was said to be capable of collecting and storing particular pieces of information.  However, whatever “effect” is generated by that collection and storage, said the Delegate, it is incidental to the claimed invention.

No meaningful limit on the claim

The Delegate referred to Network Solutions, LLC [2011] APO 65 (see my blog post).  That decision referred to a recent decision in the United States in CyberSource Corporation v. Retail Decisions, Inc., No. 2009-1358 (Fed. Cir. August 16, 2011) (see my blog post).

Cybersource observed:
‘As we stated in Bilski, to impart patent-eligibility to an otherwise unpatentable process under the theory that the process is linked to a machine, the use of the machine “must impose meaningful limits on the claim’s scope.” … In other words, the machine “must play a significant part in permitting the claimed method to be performed.”’
In Network Solutions the Delegate went on to comment that:
‘The commonality in approach with the US in relation to abstract ideas has been noted by Australian Courts (eg Grant at [21]-[24]) and, to the extent that a rule of materiality may not have been explicitly expressed in Australia, I nevertheless consider it to be an inherent requirement of the law which otherwise would elevate form over substance to the point of absurdity.’
Coming back to the present case, our Delegate concluded that ‘while “physical effects” might be able to be identified in claims, the consideration must be to ask whether those effects are “material” or, to use the words in CyberSource (supra), whether the effect places a meaningful limit on the claim’s scope.’

The “agent server” of claim 1, said the Delegate, is essentially characterised by the information content of the data it stores. It provides no material advantage to the agent server and, therefore, the agent server does not place a meaningful limit on the claim.

The Delegate then referred to the “subscription play unit”, said to monitor subscription play of the same lottery numbers for a specified number of draws.  He took this as nothing more than facilitating the play.  The utility of this unit lies in the information that it monitors (i.e. the “subscription play information”). The unit in and of itself does not place a meaningful limit on the claim.

Further steps

It’s now over to the applicant to come up with “physical effects that need to be placed into the claims to ensure that they are directed to patentable subject matter”.

It seems strange to me that the Delegate here doesn’t mention Ultramercial LLC v Hulu LLC (Case No. 2010-1544) (see my blog post).  Sure it’s a US case.  But the Australian Delegate in Network Solutions was very quick to follow the United States CyberSource decision.

Perhaps the reason for the oversight is because the Court in Ultramercial observed that 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.

Photo courtesy of author Jeremy Brooks under Creative Commons licence.

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