Wednesday, August 31, 2011

A Kiwi success story

Last week I attend a “wax off” party hosted by Aptimize for their staff and professional advisors.  The atmosphere there was jubilant.  Last month the company was acquired by Riverbed Technology, where it will become the new Web Content Optimization product group.  Aptimize founders Ed Robinson and Derek Watson will take on management positions at Riverbed in San Francisco.

Earlier this year Ed Robinson confirmed in a media article that its first patent filed in mid-2008 gave the company “breathing room” to further develop the company’s products, secure in the knowledge they would not be imitated.  He went on to state:
“Patents help protect an invention against imitation and also add value to the technology from the point of view of an investor.  If intellectual property is adequately protected, it is more likely to attract investment to aid its further development and marketing.  At the end of the day a patent is an asset, more secure than the brains and skills of development staff, who may leave”.
The company has drawn criticism from a small but vocal number of armchair critics.  I have seen disapproval of Aptimize’s pro-patent stance, unenlightened comments on the validity of Aptimize’s intellectual property, and even comments purporting to downplay the role intellectual property played in Riverbed’s acquisition of the company.

Concentrate’s Owen Scott points out the downstream benefits for our economy of the acquisition in his article “Fertilising our technology tall poppies”.  He states that:
"most of the Aptimize team, including some of the shareholding owners, will move to San Francisco, picking up more knowledge and skills about operating in the US that can be shared with our technology industry.  In my experience successful Kiwi tech entrepreneurs are incredibly generous in doing this."
A Riverbed spokesman confirms the company is “also open to finding other promising start-ups in the [Australia-New Zealand] region … As a global company we are very comfortable with managing distributed engineering and product teams”.

Tuesday, August 30, 2011

Network Solutions – the case of the frustrated Delegate

In Network Solutions, LLC [2011] APO 65 (19 August 2011), we see an example of what looks like an obviousness rejection masquerading as a “manner of manufacture” rejection.

The patent application

Australian patent application 2005250809 titled “Certified offer service for domain names” started life as a PCT application filed 16 May 2005 claiming priority from US patent application 10/854,221.  It was the subject of five adverse examination reports, eventually being set down for a hearing.

The applicant didn’t appear and instead filed written submissions.  We saw this situation earlier this year in Discovery Holdings Limited [2011] APO 56 (9 August 2011) (my blog post).  Once again, this is usually a sign the applicant has either lost interest or exceeded its financial budget.

The Delegate scolded the applicant for having filed a divisional application claiming the same subject matter.  He stated that:
“the practice of filing divisional applications in anticipation of adverse Office decisions appears to be contrary to the public interest in the prompt resolution of patent rights as well as effective use of Patent Office resources.”
There seems to be an assumption that the divisional application was filed in anticipation of an adverse Office decision.  I’m not sure I agree with that.  Applicants file divisional applications for all kinds of reasons.  Maybe the applicant had a co-pending application in another jurisdiction (like the United States) and wanted to co-ordinate claim scope.

The corresponding application

The Delegate acknowledges that the applicant claims priority from US patent application 10/854, 221.  That application is still under examination.  According to USPTO records the applicant last filed a response and claim amendments on 20 June 2011.

Claim 1 of the ‘221 application is not too dissimilar in scope to claim 1 before the Australian Delegate.  No objection to patentable subject matter of claim 1 has been raised by the US examiner.  The examiner instead rejected the claim as being obvious over two prior art documents.

Legal precedent

The applicant, in its written submissions, asked the Delegate
“to identify any legal precedent (ie. other than recent APO decisions) that identifies a situation where a physical medium was regarded as failing the requirements of Section 18(1)(a).  We specifically note that the Grant decision was concerned solely with the patentability of methods, and hence cannot be used as a basis to uphold an objection to [a] claim that defines a physical medium”.
There isn’t any legal precedent.  The applicant knew it.  The Delegate knew it.

The applicant was told that his submissions misunderstood Grant and NRDC.  There was no judicial authority, said the Delegate, that permitted a mere scheme or plan to be patentable solely because it involves a physical thing.

The Delegate cited with approval a recent decision of the US Court of Appeals for the Federal Circuit, CyberSource Corp. v. Retail Decisions, Inc. (Case No. 2009-1358) (covered in my earlier blog post).  The Delegate noted a commonality in approach with the United States in relation to abstract ideas.

He acknowledged that there is no rule of materiality explicitly expressed in Australia.  However he considers it to be an inherent requirement of the law which otherwise would elevate form over substance to the point of absurdity.  This inherent requirement appears to have its origins in the Delegate’s own comments in Invention Pathways Pty Ltd [2010] APO 10 (21 July 2010).

The Delegate refused the application, concluding that:
“In my view that is not to say that any effect produced in the operation of a computer is to be taken as conferring patentability.  Rather, it is premised on the identification of a real substantive effect, “the new and improved result”, achieved in the operation of that apparatus … This is what distinguishes the subject matter of the application from a mere idea or intellectual information and results in it being considered a practical application of the idea in physical form”.
What happens now?

I think this is a case that should have been decided on lack of inventive step rather than patentable subject matter.

We will watch with interest the progress of the corresponding US application to see if the examiner subsequently raises a subject matter rejection.  If not, this will be an opportunity for IP Australia to demonstrate this “commonality in approach with the United States” and put the Australian divisional application through to grant.

In the meantime, I expect this decision will have little precedential value.  It will be seen for what it is, another strained interpretation of “manner of manufacture” rather than a more sensible objection to lack of inventive step.

Monday, August 29, 2011

Haddad shows the boundaries of manner of manufacture

Horse racing
In George N Haddad v The Commissioner of Patents [2000] NZIPOPAT 8 (2 May 2000) we saw an acknowledgement that the term “manner of manufacture” is now interpreted more liberally.  However, the term still implies a situation which involves some sort of interaction with a real entity, or which achieves a tangible product or result.

The patent application

George N Haddad filed NZ 328238 on 1 July 1997.  After a bit of back and forth between the applicant and the New Zealand Patent Office (as it then was), Haddad filed whole contents divisional application NZ 333267, essentially a continuation application.  The case was set down for a hearing on 30 March 2000.

The invention related to a method of wagering on a sporting or racing event.  It consisted of the following steps:

  1. a better selects a number between 0 and 9 prior to the event,
  2. the better places a wager on the selected number,
  3. the participants in the sporting event or race are each allocated a number by the organisers of the sporting event or race,
  4. after the event the “predetermined criterion numbers” of the entrants are added to give a sum,
  5. the “least significant digit” is compared with the number selected by the bettor in step 1 to determine whether the bettor has been successful.

A pure number

The hearing officer referred to a decision of the Federal Court of Australia in International Business Machines Corporation v Commissioner of Patents [1991] FCA 625; (1992) 22 IPR 417.  Burchett J, on page 20 of IBM, referred to Re Walter 205 USPQ 397 (1980):
“Once a mathematical algorithm has been found, the claim as a whole must be further analysed.  If it appears that the mathematical algorithm is implemented in a specific manner to define structural relationships between the physical elements of the claim (in apparatus claims) or to refine or limit claim steps (in process claims), the claim being otherwise statutory, the claim passes muster under §101. 
If, however, the mathematical algorithm is merely presented and solved by the claimed invention … and is not applied in any manner to physical elements or process steps, no amount of post-solution activity will render the claim statutory; nor is it saved by a preamble merely reciting the field of use of the mathematical algorithm. 
Various indicia are helpful in determining whether a claim as a whole calls merely for the solution of a mathematical algorithm.  For instance, if the end-product of a claimed invention is a pure number … the invention is nonstatutory regardless of any post-solution activity which makes it available for use by a person or machine for other purposes.  If, however, the claimed invention produces a physical thing … the fact that it is represented in numerical form does not render the claim nonstatutory.”
Interaction with a real entity or achieving a tangible product or result

The Hearing Officer acknowledged that the term “manner of manufacture” is now interpreted more liberally than an earlier definition which required materials to be operated on or the application of power in their transformation.

However, it was observed that the term still implies a situation:
  • which involves some sort of interaction with a real entity; or
  • which achieves a tangible product or result.
It is only when this requirement is satisfied that there is a “manner of new manufacture” and thus an “invention” as defined by section 2.

The Hearing Officer observed that the invention in Hughes Aircraft Company [1995] NZIPOPAT 3 (3 May 1995) (see my earlier blog article), satisfied both limbs of the above test.  The height separation and convergence calculations in Hughes represented real entities in the form of pairs of aircraft.  Furthermore, the current conflict alert status that was established for pairs of aircraft represented a tangible product or result.

However, the invention in the present case was the development of a new mathematical formula for arriving at a number that determines the winner or winners of a wager.  This was observed to be merely a new method of calculating or arriving at a winning number – a purely mathematical process resulting in what was referred to in Re Walter as a “pure number”.

The claim (and dependent claims) did not define a “manner of new manufacture” or an “invention” within the meaning of section 2.

Photo courtesy of author Paolo Camera under Creative Commons licence.

Thursday, August 25, 2011

Stealthy work

I said in an earlier post that we managed to offload one of our roosters.  This was only a short-term solution at best.  We still had nine roosters left.  There’s not exactly a huge market for live roosters.  They needed to be “Hopped”.  More on Hop later.

Time for action.  We finished off dinner and fortified ourselves with a few glasses of pinot noir.  It was cold and dark out there.  And we had wild roosters to deal with.  There were five of us.  My wife and I.  Our German au pair.  And Lydia and Henning, two German backpackers staying with us.  Nine of them.  Five of us.

We had shut up the hen coop before dark.  So that meant our foe were roosting in the trees. We have some magnificient trees.  About a dozen totara (Podocarpus totara).  Our ones stand about 15m tall and have a wonderful spreading shape.  Great to look at.  Not great to climb in the dark.

We identified the roosters from looking up at them from the ground.  We recognised them by their tail feathers.  Knocked them out of the trees with a stick.  Grabbed them and locked them up in the coop.  We managed to catch six of them.  We didn’t always get it right.  There’s probably a few hens in our flock that are still cross at us.  But we got the job done.

Hop was arriving the next day.

Wednesday, August 24, 2011

A heritage perspective on Christchurch

Christchurch Earthquake 22/02/11
The recent earthquakes in Christchurch left hundreds dead, thousands homeless, and tens of thousands financially affected.  Without detracting from what is clearly a human tragedy, the loss of heritage buildings is emerging as yet another tragedy.

Last week the Greytown Community Heritage Trust hosted our annual history lecture.  The guest speaker this year was Win Clark.  Win is an engineer and executive officer for the New Zealand Society for Earthquake Engineering.  He is a regular visitor to Christchurch where he is involved in assessing the damage and providing advice about reconstruction and earthquake strengthening.

The New Zealand Historic Places Trust maintains a Register of Historic Places that represents the national schedule of New Zealand's treasured heritage places.  Historic places are further divided into two categories.  Category I status is given to places of 'special or outstanding historical or cultural heritage significance or value'.  Category II status is given to places of 'historical or cultural heritage significance or value'.

Christchurch has a broad distribution of Category I and Category II damaged buildings.  Surviving buildings tended to have four characteristics:

  • Regular form
  • Good materials
  • Good workmanship
  • Good maintenance

He gave one example of a row of buildings that had suffered extensive damage.  The ground floors were tenanted by low-rent retailers.  The upper floors were vacant.  The building owner(s) had allowed the buildings to fall into disrepair.  Maintenance had not been kept up.

Another example he gave was a pair of semi-detached residential dwellings.  The owners had removed internal walls to open living areas up.  The walls were not load bearing so the owners were perfectly entitled to remove them.  However, during the February earthquakes, the internal walls inhibited lateral movement in a way that was not anticipated.  Those dwellings that still had the internal walls fared better than those that didn’t.

One building that escaped largely undamaged was a fire station.  The owners had installed internal bracing a few years earlier.

The fate of other heritage buildings is entirely in the hands of their owners.  In each case the issue is one of economic viability.  There needs to be an owner who is both willing and financially able to save the building.  In some cases a building owner is keen to maintain the original building façade and build behind it.  However, insurers are not willing to insure the composite structure.  And owners don’t want the liability in case someone else is injured in a future earthquake.

Although I understand the financial pressures on building owners, it is a pity to see these heritage buildings lost.

Photo courtesy of author Geof Wilson under Creative Commons licence.

Tuesday, August 23, 2011

The Hughes decision – a commercially useful effect

Plane crash Turkish Airlines flight TK 1951 - 2nd day

The new Patents Bill, when (if) it comes in, will retain the “manner of manufacture” statutory definition of patentable subject matter.

In Hughes Aircraft Company [1995] NZIPOPAT 3 (3 May 1995) the Hearing Officer developed a test for patentability of computer-related inventions that is still used today.

The Hughes patents

Hughes Aircraft filed New Zealand patent application 221797 on 21 July 1987.  The company filed divisional applications 233797 and 233798 during prosecution in response to a unity objection.  All three cases went to a hearing on 8 February 1994.

The claims in question each related to computer-controlled methods for determining en route airspace conflict alert status for a plurality of airborne aircraft.

Claim 1 of the ‘797 patent for example recited 5 conditions involving height separation and convergence of pairs of aircraft.  The claim established, for each aircraft pair meeting all 5 conditions, a current conflict alert status.

Commercially useful effect

The first Australian case to be decided by a higher Court was International Business Machines Corporation v Commissioner of Patents [1991] FCA 625; (1992) 22 IPR 417.

The main claim in the IBM case involved a method for producing a visual representation of a curve image on a computer display.

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 a desired curve by computer.  The production of an improved curve image was held to be a commercially useful effect in computer graphics.

The Hearing Officer in New Zealand adopted the test derived from the IBM case which was the current test used by the Australian Patent Office at the time:
Does the invention claimed involve the production of some commercially useful effect?
He asked himself whether each of the claims define a method which, either directly or by clear implication, embodies a commercially useful effect.

The effect in each case was the improvement in air traffic control and the prevention of mid-air collisions.  This was a commercially useful result.  The assumption here is that a pilot would heed the conflict alert status.  Back in 1995 this was a fair assumption.

Use of a machine programmed to operate in a new way

The applications were also held to comply with the criteria set out in the United Kingdom in Burroughs Corporation (Perkin’s) Application [1974] RPC 147.

In that case Graham J said:
If [a] method results in a new machine or process or an old machine giving a new and improved result, that fact should in our view be regarded as the “product” or the result of using the method.
In New Zealand the Hearing Officer identified the Burroughs test as stating that a method claim, to be patentable, must be clearly directed to a method involving the use of a machine modified or programmed to operate in a new way to produce a new machine or process, or an old machine giving a new and improved result.

Photo obtained under Creative Commons licence.

Monday, August 22, 2011

Cybersource Corporation v Retail Decisions – a beautiful mind

In CyberSource Corp. v. Retail Decisions, Inc. (Case No. 2009-1358) we see the United States Court of Appeals for the Federal Circuit construct a can-you-do-it-in-your-mind test to sit alongside the existing machine-or-transformation test.  We also see the Beauregard claim hit the canvas.

The Cybersource patent

Cybersource is the owner of US Patent No. 6,029,154 (‘154 patent) for a “method and system for detecting fraud in a credit card transaction between [a] consumer and a merchant over the Internet”.

The ‘154 patent identifies a problem for online sales of downloadable content.  Address and identity information are not enough to adequately verify that the customer who is purchasing the goods is actually the owner of the credit card.

The solution is to use “Internet address” information to determine whether an Internet address relating to a particular transaction is consistent with other Internet addresses that have been used in transactions using the same credit card.


The Court found that process claim 3 failed to meet either prong of the machine-or-transformation test.  The method simply required one to “obtain and compare intangible data pertinent to business risks”.

The mere collection and organisation of data regarding credit card numbers and Internet addresses was insufficient to meet the transformation prong of the test.  The plain language of claim 3 does not require the method to be performed by a particular machine, or even a machine at all.

Mental process

The Court went on to hold that claim 3 failed to recite patent-eligible subject matter because it was drawn to an unpatentable mental process – a subcategory of unpatentable abstract ideas.

In Bilski v. Kappos, 130 S. Ct. 3218 (2010) the Court held that mental processes are not patent-eligible subject matter because the application of only human intelligence to the solution of practical problems is no more than a claim to a fundamental principle.

All of the method steps of claim 3 could be performed in the human mind, or by a human using a pen and paper.  Cybersource admitted as much in its appeal brief.  Claim 3 did not limit its scope to any particular fraud detection algorithm, and no algorithms were disclosed in the ‘154 patent specification.

This is completely different from cases where the use of a computer is required to perform the claimed method.  Like calculating a position of a GPS receiver, or rendering a halftone image of a digital image.  Apparently.

Substance over form

Beauregard claim 2 was dismissed as reciting nothing more than a computer readable medium containing program instructions for executing the method of claim 3.  Claim 3 was found to be unpatentable being drawn to a mental process.

The Court acknowledged that, as a general matter, programming a general purpose computer to perform an algorithm creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.

But simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind didn’t get claim 2 over the line.

What now?

We have a new subject matter test in addition to the machine-or-transformation test.  This is the can-you-do-it-in-your-mind test.  I guess we will see some clarification as to who’s mind.  Some people can do really clever hard stuff in their heads.  Should the mind be an ordinary mind?  Or a beautiful mind?

Thursday, August 18, 2011

A new mum

I said earlier in "we need a hero" that we gave egg-roulette a rest for a while.

We let one of our proud hens hatch her first clutch of eggs.  They weren’t all hers.  But we didn’t tell her that.  She did really well.  We kept her in a box with her little fluffy charges for a few weeks.  We knew from prior experience that they needed to be big enough to fight off cats, hawks and other nasties.

Things were great for a while.  But nothing in the animal kingdom stays cute for long.  Pretty soon we were overrun with poultry.  Feeding them in the mornings became quite a scary experience. Imagine thirty angry birds running toward you.  Beady eyes fixed on you.  Scaly feet pumping back and forth.  Kind of hopping from side to side as they ran.

And things got even worse when our male babies hit adolescence.  Suddenly it was a game of who can be the loudest.  Who has the biggest wing feathers.  Who has the sharpest beak.  Things were getting pretty nasty.

We managed to offload one of our young roosters at least.

Our neighbours Rose and Al moved out of their house earlier this year.  They are now living in a converted shipping container down the road.  They have their own blog called The Crate Outdoors.

A nice family has since moved in next door.  Being New Zealand of course they happen to be cuzzies.  Olivia is my father’s brother’s ex-wife’s niece.  We had them over for dinner and found out they had some bantam hens but no rooster.  We sure had a deal for them!

We headed outside and grabbed the largest one.  I don’t blame him for all the squawking and carrying on he did.  I can imagine myself being yanked out of bed by the feet and shoved in a box.  Little did he know, he was the lucky one.  We still had nine more roosters left.

Time for some hard decisions.  And rooster soup.

Wednesday, August 17, 2011

The darker side of patent protection

Bomb Shells, Laos
Patents are a well known and well used source of information.  But what if the information in a patent specification would compromise New Zealand’s security, defence or international relations?

New Zealand, Australia and member countries of the North Atlantic Treaty Organization (NATO) such as the United States and the United Kingdom have the legal machinery to make sure that such information never sees the light of day.  The country places a secrecy order on the patent application until the information is deemed safe to release.  While an invention is under a secrecy order there are a finite list of countries in which patent applications can be filed.

Many inventions are clear candidates for secrecy orders.  Examples include camouflage and radar reflectors, bioweapons and nuclear technologies.  Other technologies are not so clear-cut.  One example is an aerial crop duster.  Whether it’s an agricultural tool or a bioweapon is determined entirely by its payload.

Some software technologies have the potential for terrorism.  The best known example is the first general-purpose electronic computer.  ENIAC was designed and built in the 1940’s to calculate artillery firing tables for the US Army’s Ballistic Research Laboratory.  Any child who has played Angry Birds has mastered the principles of trajectory and force.  But Angry Birds wasn’t around in the 1940’s.

Any person resident in New Zealand must have a patent application vetted by IPONZ before filing the patent application offshore.  The patent application is filed first in New Zealand so IPONZ can have a look at it.  IPONZ will impose a secrecy order on the application if it is considered a security risk.

Some applicants obtain clearance from IPONZ to file outside New Zealand without first filing in New Zealand.  IPONZ reviews the subject matter of the clearance request.  Clearance is granted if IPONZ does not anticipate a security risk.

IPONZ assigns a security classification to the patent application, or the subject matter of the clearance request, if the invention would compromise national security.  The application undergoes normal search and examination under secure conditions by IPONZ.  But the application stays in a pre-allowance state and is never published.  Some inventions are eventually de-classified and allowed to proceed to allowance and issue.

It is risky to file a patent application outside New Zealand without first filing an application in New Zealand or obtaining clearance.  New Zealand residents who do so may be found guilty of contravening secrecy for patent applications and face a jail term of 2 years.  This penalty is in addition to those already applicable under the Crimes Act 1961.  These are:

It's always a good idea to comply with the Patents legislation.  Especially this part.

Photo courtesy of author Lorna87 under Creative Commons licence.

Tuesday, August 16, 2011

Discovery Holdings Limited – Another nail in the coffin

Ancient Coffin
In Discovery Holdings Limited [2011] APO 56 we see a business method held to be unpatentable despite the token mention of hardware in the claims.  Another nail in the coffin for pure business methods in Australia.

The Discovery Holdings patent application

Discovery Holdings Limited (“applicant”) filed patent application 2007257547 as a national phase application on 9 December 2008.  The title of the patent application is “A method of managing a life insurance plan and a system therefor”.

There appear to have been a few round of examination reports and submissions in response to those examination reports.  The case was eventually set down for a hearing on 1 June 2011.  The applicant opted not to be heard and instead filed written submissions for the consideration of the Hearing Officer.  This is usually a sign the applicant has either lost interest or exceeded its financial budget.

What did it cover?

The invention relates to a method of managing a life insurance plan.  In most cases an insured person (“insured life”) pays a premium to a life insurer.  The life insurer pays a predetermined sum to the insured life or his/her beneficiary on the occurrence of an insured event.  The invention was the proposal to extend the range of insured events to ones resulting in the insured life’s parents.

Was it an invention?

The Hearing Officer didn’t think so.  He found that none of the claims defined an invention that is a manner of manufacture.  He also found that none of the claims involve an inventive step.

The Hearing Officer referred to Australian court decision Grant v Commissioner of Patents [2006] FCAFC 120 and Patent Office decision Iowa Lottery [2010] APO 25.

In his view an insurance payout is no more a physical effect than paying a lottery prize (as in Iowa Lottery) or taking a charge over an asset (as in Grant).  In each case the process has not led to the creation of anything physical, but rather has resulted in a transfer of legal rights of ownership or entitlement.  The notion of a “right” is abstract in nature.  He observed that it is not the “predetermined amount” that is created as a result of the method, merely the entitlement to it.

The Hearing Officer offered further comments on patentability from a broader perspective.  He observed that the invention related to a method of managing a life insurance plan which is inherently unpatentable.    The computing technology defined in the claims was both “rudimentary and commonplace”.  In applying Grant the Hearing Officer held that the “concrete effect or phenomenon or manifestation or transformation” must be “one that is significant both in that it is concrete but also that it is central to the purpose or operation of the claimed process or otherwise arises from the combination of steps of the method in a substantial way”.

He found that the physical effect identified was “peripheral and subordinate to the substance of the claimed method”.

What’s the implication?

This decision joins the small, but growing, number of Australian Patent Office decisions in which an invention has failed the test for manner of manufacture.  This is a situation IP Australia is going out of its way to create.  This patent application could have perhaps been refused solely on lack of inventive step.

Australian Hearing Officers are taking an increasingly dim view on patent applicants who attempt to elevate unpatentable business methods to a manner of manufacture through token use of hardware.

Photo courtesy of author BlueSand0909 under Creative Commons licence.

Thursday, August 11, 2011

Guest Post: Will the WAI 262 report stop misuse of Maori words and images?

Thanks to Lynell Tuffery Huria for this article.

The WAI 262 report, released on 2 July 2011, discusses the misuse and misappropriation of Maori words and images.  Despite this report, we continue to see Maori culture being used in commercial activities with little or no consultation with Maori.

Most recent examples include:

These examples are nothing new.  Aspects of Māori culture have been exploited for commercial gain since colonisation.  Similar problems exist for most, if not all, indigenous cultures around the world.

Some say Māori culture should be available for all to use and benefit from.

Māori do not agree.  Māori have a unique relationship with their culture.  They see themselves as the kaitiaki (guardian) of that culture.  The kaitiaki role includes ensuring any use of their culture complies and acknowledges the value system that underpins that culture.

The ongoing misuse of Māori culture (amongst other things) led to the lodging of the WAI 262 claim.  This claim sought protection for Māori culture, but also sought recognition of the role of Māori, through iwi and hapū, as kaitiaki of that culture.

How does the WAI 262 report propose to deal with this problem?

The Waitangi Tribunal agreed with Māori.  The Tribunal saw an urgent need for the integrity of Māori culture to be maintained.  The Tribunal acknowledged that Māori were not involved in decisions on the use of their culture.  The report seeks to change this current position and involve Māori in all decisions relating to its culture in this future.  The Tribunal saw this as a real opportunity for New Zealand to move forward in partnership, as intended by the Treaty of Waitangi.

The Tribunal did not grant full authority or control over Māori culture to Māori.  Instead, the Tribunal recommended a regime that would replace the Trade Mark Advisory Committee (established under the Trade Marks Act 2002) with a new Commission.  This Commission would have the responsibility to:

  • hear objections on whether use of a taonga work, taonga derived work, or mātauranga Māori is offensive or derogatory
  • hear kaitiaki objections that a taonga work is being commercially used without consultation or consent
  • make decisions on whether a work is a taonga work
  • identify kaitiaki
  • keep a register of taonga works and kaitiaki
  • develop and produce guidelines and best practices for the use, care, protection, and custody of taonga works.

The new Commission’s decisions will be binding.  The Trade Mark Advisory Committee’s recommendations are currently not binding.

The exact shape and makeup of the Commission is not clear.  But involvement of Māori is considered imperative to achieve the partnership vision outlined in the report.

Could these recommendations stop the recent examples of use of Māori culture?

The Tribunal’s recommendations are restricted to use of Māori culture in New Zealand.  Therefore, the recommendations could impact on how and when Māori culture is used in New Zealand in the future.  For example, if the Commission found the sale of the MAORI personalised plate or the sale of cheap Māori souvenirs was offensive or derogatory, then the sale of those products could be stopped by the Commission.  This action is not currently possible.  This is a fundamental change.

Could the recommendations stop use of Māori culture overseas?

The Tribunal’s recommendations will not have any effect on the use of Māori culture overseas.  For example, the Commission could not stop the use of tā moko on models for a French magazine or the use of TUATARA as the name of a new sports car.

But the WAI 262 claim was considered revolutionary when it was filed.  This claim was considered synonymous with the plight of indigenous peoples around the world, and the report has been eagerly awaited by a wide international audience.

It is possible other indigenous peoples could rely on this report as a basis to achieve a similar level of recognition for their culture in their home countries.  And consequently result in reciprocal rights for Māori culture to be recognised around the world.

It is also quite possible this decision could influence the ongoing negotiations on this issue in WIPO through the Intergovernmental Committee on Genetic Resources, Traditional Knowledge, and Traditional Cultural Expressions.

Do the recommendations affect existing trade mark rights?

The Tribunal report states it will be difficult to retrospectively remove any existing trade mark rights.  In fact, the Tribunal only sees a need to remove these trade mark rights if they are considered derogatory or offensive.

For those that already use Māori culture as part of their commercial activities, you can breathe a sigh of relief.  But you should seek advice and make sure your use will not be considered derogatory or offensive.

Where to from here?

These recommendations are non-binding.  The government will consider which aspects of the report to adopt, and then we can expect further legislation to amend our trade mark legislation.

In the meantime, if you adopt a brand or trade mark that is derived from Māori culture, then you should consider obtaining some advice on whether this use should be considered derogatory or offensive, or is derived from a taonga work.  In either situation, consultation with Māori is the key.

Ko Aotearoa Tenei – “This is New Zealand”

Ko Aotearoa Tenei, “This is New Zealand” is the three volume report in response to the WAI 262 claim.  Twenty years in the making, the report is the Tribunal’s first whole of government report that addresses the work of more than 20 government departments and agencies in areas such as trade marks, copyrights, patents, plant variety rights, language, science and technology, conservation, laws, history, education, art, and international agreements.

For more background on the claim, see our earlier article.

Wednesday, August 10, 2011

150 years of patents in New Zealand

It’s now 150 years since the New Zealand Patent Office (as it then was) issued NZ Patent No. 1 to A.G. Purchas and J. Ninnis for an invention titled “An invention for the preparation of the fibre of the Phormium tenax and other plants for manufacturing purposes”.

Phormium Tenax, better known as harakeke or swamp flax, was a useful material from which to manufacture rope and woven fabric.  Processing flax to extract its natural fibre was apparently a labour-intensive process.  The traditional Maori method used mussel shells to strip away fibre manually from the upper leaf surface.

The patent covered a plant fibre dressing process and leaf-stripping machine.  The patentees built a mill (hopefully AFTER filing their patent application) on the banks of a stream.  Harakeke leaves were stripped by grooved iron beating plates.  Stream water circulated by the mill wheel removed plant waste.

Mechanical stripping machines could produce 250 kg (550 lb) of fibre in the time it took a worker to manually produce just 1 kg.

Times have moved on.  There are better sources of rope these days.  However it is good to see there is still at least one working flax stripping machine in New Zealand.  It’s a museum piece still supplying stripped flax to furniture makers and to others for packing and Maori crafts.

Tuesday, August 9, 2011

A gunman in Masterton

Masterton has its own three cinema movie complex.  It’s called, not surprisingly, Regent 3 Cinemas.  It’s a little tired.  Threadbare carpets.  Broken seats.  Faithful reproduction of 3D movies in 2D.  The kids love it.  They call it the-big-screen-where-you-can-watch-a-movie-and-eat-popcorn-while-you’re-watching-the-movie.  It’s the last place on earth you would expect an armed offender’s callout.

A couple of years ago now a man was seen on the roof of the movie complex.  Crouching behind a parapet carrying a gun.  Armed police with tracker dogs were alerted and raced to the scene.

The movie complex is owned by (then) Masterton District Councillor Brent Goodwin.  It turns out that it was his son [snip*] who sparked the incident.  He says he was shooting pigeons on the roof with an air rifle.  In Masterton’s main shopping precinct.

This is what I love about rural New Zealand.  He didn’t get blown off the roof by armed officers, the military or even a concerned bystander.  Instead, the media report on the incident expressed the gunman’s wish that police not level charges against him.  He was about to travel overseas and didn’t want the inconvenience of a firearms conviction on his record.

Let’s hope he [snip*] doesn’t take his firearm with him on his travels.

* name removed by request 12/8/11

Monday, August 8, 2011

Preserving Greytown's Main Street

In a previous blog I talked about the Greytown Heritage Trust of which I am chair.  Today we made a submission on a proposal to extend the Greytown Historic Heritage Precinct.

The Wairarapa is governed locally by three different territorial authorities.  These are the Masterton District Council, Carterton District Council and the South Wairarapa District Council.  A few years ago the three Councils worked together to implement a Wairarapa Combined District Plan.  This District Plan was publicly notified on 26 August 2006.

It is well recognised that Greytown’s Main Street is one area of the Wairarapa that has significant historic heritage.  This heritage arises as a consequence of the combined character and values associated with a number of the buildings and structures on the street.  Many of these individually may not be regarded as significant.  But collectively they are quite striking.

Only a small part of Greytown’s Main Street enjoys protection as a Historic Heritage Precinct.

Submitters on the District Plan back in 2006 requested extension of the Greytown Historic Heritage Precinct.  They were concerned about the loss of character and historic heritage of those areas of Main Street not protected by the Historic Heritage Precinct.  They highlighted recent developments as examples of the degradation that may occur in the future.

Representatives of the Councils agreed that additional controls are needed along Greytown’s Main Street to protect the streetscape and residential character of the area.  They also noted that the existing Design guidelines are applicable only to commercial properties.  They need to be reviewed to make them applicable for residential purposes.

The three Councils propose a change to the Wairarapa Combined District Plan to extend the Greytown Historic Heritage Precinct .  The change is described in Proposed Plan Change No 4 together with a map of the proposed Heritage Precinct Extension.

The Greytown Heritage Trust supports this proposal.

Friday, August 5, 2011

The January report

In an earlier post on the issue of the patentability of computer-implemented inventions in New Zealand I mentioned the MED October Report to the Commerce Select Committee.  The October Report does not support the Committee's view that it "received advice that our recommendation to include computer programs among the inventions that may not be patented would be unlikely to prevent the granting of patents for inventions involving embedded software".

The October Report set out three options for the Committee.  These are:
(a) exclude all software from patent protection, including embedded software;
(b) leave things as they are; or
(c) adopt a hybrid UK/EPO approach.

For reasons known only to the Committee, it asked for a further briefing on the issue of the patentability of computer programs.  This resulted in the Supplementary Report to the Commerce Select Committee in January 2010.  The Committee still supported some restrictions on the patenting of software, while retaining the patentability of "embedded" software.

At the request of the Committee, the MED prepared the January Report that looked at two possible approaches.  These were:
(a) allow patents on embedded software & exclude all other software; or
(b) exclude computer programs from patent protection.

Option A in the January 2010 report was not the MED preferred option.  There is no simple definition of "embedded" software that could be incorporated into the Bill.  IPONZ would not be able to make use of case law or practice developed elsewhere.  The MED found that "there is no simple definition which exactly captures the idea of 'embedded software' or 'embedded systems'".  Devising a simple definition would "likely be difficult, if not impossible".  Technical advances may "mean that any definition fixed in legislation becomes obsolete fairly quickly".  No other country has attempted to make the distinction between "embedded" and "non-embedded" computer programs in patent legislation.

MED made it clear that Option A was certainly not the MED preferred option.

Remember that the MED preferred option was to leave things as they are, as stated in the October Report.  When pressed by the Committee, it came up with the next best thing.

Option B in the January 2010 report suggested an exclusion from patent protection for computer programs, "the wording of the exclusion being similar to, or the same as, the exclusion for computer programs contained in the EPC and the UK Patents Act."  The MED report stated that "IPONZ has indicated that if such an exclusion was provided, it would use EPO and UK case law and practice to interpret the exclusion".

The report went on to state that "despite what appears to be a 'blanket' exclusion, the EPO and UK courts have ruled that some types of computer programs can be patented.  In general, if an invention involving a computer program possesses a 'technical character' it will be patentable."

Option B was the MED preferred option of the two options in the January 2010 report.

This option is the only option that can be sensibly reconciled with the statement in the commentary to the Patents Bill that says "we received advice that our recommendation to include computer programs among the inventions that may not be patented would be unlikely to prevent the granting of patents for inventions involving embedded software."  Option B is the only option that makes sense.

It is clear that the Commerce Select Committee chose Option B (European law) from the January 2010 report.  However, the wording of the exclusion proposed by the Committee does not reflect the intention of the Committee to follow European law.

Thursday, August 4, 2011

The October report

Following my earlier blog post on the Court Report it seems appropriate to review some of the background to the issue of the patentability of computer implemented inventions in New Zealand.

The Parliamentary Commerce Select Committee issued its report on the Patents Bill on 30 March 2010.  The report contains recommended changes to the Bill.  The Patents Bill must now pass through second and third readings in Parliament.  Further changes could still be made to the Bill before it becomes law.

The Committee recommends an amendment to exclude computer program inventions from patent protection.  Proposed clause 15(3A) simply states “A computer program is not a patentable invention”.  The Committee said it was “aware of New Zealand companies who have invested in a significant number of software-related inventions, involving embedded software”.

In its report the Committee states that it "received advice that our recommendation to include computer programs among the inventions that may not be patented would be unlikely to prevent the granting of patents for inventions involving embedded software".

MED released a report of advice for the Select Committee in October 2009.  The October Report records that the Committee wanted to restrict the "patentability of computer software while maintaining the patentability of so-called 'embedded software'" (para 26).

MED set out three options for the Committee. These are:
(a) exclude all software from patent protection;
(b) leave things as they are; or
(c) adopt a hybrid UK/EPO approach.

The MED recommendations in the report are clear.

Option C was not the recommended approach. It is described in the report as far from ideal (para 57) and difficult to implement (para 59).

The MED suggested the best approach was to either (a) exclude all software from patent protection, or (b) leave things as they are. (para 53).

The MED document goes on to state that a blanket exclusion (Option A) would be relatively easy for the Intellectual Property Office of New Zealand (IPONZ) to implement and would leave no doubt as to what was intended (para 53). However, a blanket exclusion for computer programs would also exclude "embedded" software from patent protection in New Zealand (para 54).

It was then over to the Committee. The MED advice states that if the "Committee feels that it is essential to maintain the patentability of embedded software in New Zealand, it may be best to maintain the status quo" (para 54). This is Option B.  In this case the Patents Bill "should not contain any explicit provisions regarding the patentability of computer software" (para 60).

If the Committee indeed received advice that excluding computer programs from patent protection would still allow the granting of patents for embedded software, then the October Report is not it.

The recommended approach, if the Committee wanted to restrict the "patentability of computer software while maintaining the patentability of so-called 'embedded software'", was Option B.  Leave things as they are.  No explicit provisions regarding the patentability of computer software.

This would not mean opening the floodgates.  It would simply mean continuing to apply the existing clear set of guidelines as to what is patentable subject matter and what is not.  The patentability of software in New Zealand has evolved over the last two decades through interpretation of the concept of "manner of manufacture" by Courts and Patent Offices in both New Zealand and Australia.

For reasons known only to the Committee it did not follow the advice of the October Report.  It asked for further advice from the MED.  Why did it do this?  Was the advice wrong?

Wednesday, August 3, 2011

Our relationship with India

Early last year our New Zealand Trade Minister and his counterpart in India announced the start of negotiations for a Free Trade Agreement between the two countries.  New Zealand's exports to India were valued at NZ$630 (US$542) million in 2009.  The Foreign Affairs, Defence and Trade Committee initiated an inquiry to consider the relationship.  The New Zealand Institute of Patent Attorneys (NZIPA) filed submissions for consideration.

The inquiry

The terms of reference for the enquiry 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 submission

The NZIPA represents almost all registered patent attorneys who are resident in New Zealand.  Our members regularly advise New Zealand business on intellectual property rights available in New Zealand and in New Zealand’s major trading partners, including India.

From an intellectual property perspective the relationship with India disadvantages New Zealanders.  We suggest addressing at least one issue to put the two countries on a more balanced footing and thereby encourage trade between the two countries.

Patent attorney-client privilege

Clients of registered patent attorneys in New Zealand enjoy privilege in the advice they receive from that patent attorney.  This privilege is extended to clients of registered patent attorneys (or equivalent profession) in India.

That same privilege is not extended by India to clients of registered patent attorneys in New Zealand.

This means that an Indian company will receive advice from an Indian patent attorney that is privileged in New Zealand.  However, a New Zealand company will receive advice from a New Zealand patent attorney that will not be privileged in India.

We think India should be encouraged to reciprocate the privilege New Zealand law affords overseas practitioners and their clients.

Monday, August 1, 2011

Waitangi Tribunal says refuse patent applications that interfere with indigenous relationships

One of the recommendations of the Waitangi Tribunal in the WAI 262 report is to grant the commissioner the power to exclude patents that are contrary to ordre public as well as morality.

The Tribunal observed that Maori are obliged to act as kaitiaki (cultural guardians) towards “taonga species” of flora and fauna within their tribal areas.  “Taonga species” in turn are flora and fauna that are significant to the culture or identity of Maori tribes.

The commissioner, says the Tribunal, should have the power to refuse patents that unduly interfere with the relationships between kaitiaki and taonga.  An ordre public clause would provide this power.  Ordre public is also relevant to the consequences of failing to disclose use of traditional knowledge in the patenting process.  I cover the disclosure requirement in an earlier blog post.

The Tribunal doesn’t give a lot of guidance as to when an ordre public rejection should be made.  The Commissioner is supposed to balance the interests of kaitiaki, the applicant, the wider economy and community, and the species itself.

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