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.

1 comment:

  1. The production of an improved curve image was held to be a commercially useful effect in computer graphics. Then they create the design with highly skilled people.
    inconel 601


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