In Maximum Availability Limited  NZIPOPAT 31 (31 July 2006) we saw an applicant secure patent protection in New Zealand for a novel method of replicating a database. However the Hearing Officer refused a claim to the resulting replicated database. The claim did not define an invention as it did not relate to a “manner of new manufacture”.
The patent application
Maximum Availability Limited (the applicant) first filed its application for a “method and apparatus for data processing” in New Zealand on 9 October 2000. A few years passed while it filed a PCT application, entered national phase in New Zealand, went through a few rounds with the examiner, and ended up in a hearing on 29 May 2006.
Method claim 1 read as follows:
1. A method of replicating information from a source system at a target system comprising the steps of:Claims 2-7 were method claims dependent on claim 1.
(a) receiving information strings from the source system; and
(b) assigning the information strings to serialisation groups for processing such that interrelated information strings are processed in the same serialisation group.
Claim 11 was the only claim at issue at the hearing. It read as follows:
11. A database replicated by the method of any one of claims 1 to 7.The examiner had objected that this claim was to a database, which is not a new manner of manufacture. In the opinion of the examiner, a database is considered to be intellectual information which, irrespective of the form of storage or presentation of that information such as on a printed sheet, electronic display, or computer storage, is not patentable subject matter as it is a mere presentation of information.
The database/computer program distinction
The applicant argued that a database is not a “mere collection of data” but rather an organised collection of data stored on computer readable media and organised into a structure that defines the set of operations that can be performed on it by a database management system. In other words the structure defines the way in which the computer can be controlled to access and manipulate the data.
The Hearing Officer agreed.
The applicant argued that a database is indistinguishable from computer software and that the distinction between software and a database is arbitrary. When stored on a computer readable medium both software and a database are stored in binary form and are indistinguishable. Both a computer program and a database are stored as mere binary data to be interpreted by the computer.
The Hearing Officer disagreed.
He said there is a difference between the database and the program used to access it (the DBMS – Database management system). The database is a structured (or organised) collection of information. The DBMS is a set of instructions designed to extract the required data from the database by matching the searching criteria to the stored information. Therefore the database, containing information organised in a predetermined manner, is distinct from the DBMS, the means used to access the data.
The Hearing Officer observed that a database can be considered as analogous to a table or spreadsheet in which data is arranged in a manner which facilitates searching and information retrieval. He added that it is well established that such arrangements do not fall within the definition of “invention” as defined by section 2.
The applicant referred to Hughes Aircraft Company  NZIPOPAT 3 (3 May 1995) (see my earlier blog article), arguing that a database analogously “embodies” a commercially useful effect, an organisational structure enabling fast and efficient access to and management and retrieval of the data stored in the database.
The Hearing Officer disagreed. In the Hughes Aircraft case the invention claimed was a computer process or method for determining en route conflict between aeroplanes, whereas a database is essentially a collection of data, albeit arranged in a form in which the data is readily searched by suitable software.
The applicant referred to George N Haddad v The Commissioner of Patents  NZIPOPAT 8 (2 May 2000) (see my earlier blog article), arguing that a patentable invention must involve some sort of interaction with a real entity or achieve a tangible product or result. A database, said the applicant, fulfils this requirement because the database involves interaction with a storage medium in that the data and details of the organisation of the data are stored on a computer readable storage medium and such storage requires modification of the storage medium which is a real entity.
The Hearing Officer disagreed. There is a clear distinction between the database (data organised and stored in a certain way) and the DBMS (the program used to maintain, organise and access the data).
Novelty in the database
The patent examiner assessing the case had earlier noted that:
“the replicated database of claim 11 is not new but a copy of a database, that is, an identical database. Replicating a database does not make the database new as the process of claim 1 is not ‘manufacturing’ the database but is copying or replicating it.”The Hearing Officer agreed. He observed that:
“the invention of the present complete specification is a method for ‘replicating’, or copying, a database from one system (a ‘source system’) to another system (a ‘target system’). The two databases are substantially identical with no changes being made to the data in the copying process.
It seems to me that the process can be considered as analogous to the copying of a paper document. In such a case the copying might be performed by a novel method and/or apparatus (which would presumably be patentable) but would result in an identical representation of the information on the original paper. Neither the information itself nor its arrangement on the paper sheet would be patentable and it would be unlikely that a product by process claim for the copied information would be allowed.”Further steps
The Hearing Officer concluded that the subject of Claim 11 was not an invention as defined in section 2 as it did not relate to a “manner of new manufacture”. The remaining claims were allowable. He referred the case back to the Patent Office for the completion of the pre-acceptance procedures.
Photo courtesy of author shindoverse under Creative Commons licence.