Wednesday, February 20, 2013

The national phase workaround

New Zealand is in the process of overhauling 60-year old legislation. The new Patents Bill is intended to create a balanced patent system that will protect inventions and encourage innovation.

One of the challenges imposed on the Intellectual Property Office of New Zealand (IPONZ) is to put in place a new computer system that will handle both sets of laws seamlessly. This is an impossible task. However, IPONZ has been providing workarounds to address the inevitable glitches in their system.

Tougher examination

Under the new regime examiners will now be formally permitted to examine for inventive step. The new prior art base for examiners will include matter published or used in New Zealand or elsewhere.

The Bill provides several processes for third party challenge to a patent application or patent. These are opposition before grant, re-examination before grant, assertion before acceptance, revocation before the
Commissioner or Court, and re-examination after grant.

The Bill excludes from patentability any invention where commercial exploitation of the invention is contrary to ordre public (public order) or morality. The Bill further excludes human beings, methods of treatment of human beings, methods of diagnosis practiced on human beings, and plant varieties.

There is also a computer program exclusion that is the subject of a Supplementary Order Paper (SOP). Government SOP 120 introduces a European-style ‘as such’ exclusion. The exclusion is a result of lobbying by the open source community who felt that computer software should be excluded from patent protection like it is in Europe.

The result of all this is that some inventions that are eligible for patent protection under the current law will no longer be patentable under the new law.

Transitional provisions

The validity of patents issued under the current Act will generally be judged under the existing law. Patent applications made under the current Act will generally continue to be dealt with under that Act even after the new Act commences.

PCT applications that enter the New Zealand national phase before the new Act commences will be dealt with under the old Act. Where national phase entry is made after the new Act commences, the application will be dealt with under the new Act.

It is likely that we will see an increase in national phase entry applications prior to the new legislation coming into effect. Some applicants may wish to enter national phase in New Zealand early to avoid the new law.

The new system

In the last couple of years the Intellectual Property Office of New Zealand (IPONZ) has developed a world-leading online registration system.

In a press release last year the Minister responsible described the new system as 'the best in the world. It removes the need for paper filing, cuts down on processing times, reduces compliance burdens and introduces much greater capabilities for Kiwi entrepreneurs'.

Unfortunately the new system is unable to handle cases in which an applicant wishes to enter national phase before publication of the international specification.

New guidelines direct applicants in these circumstances to:
  • File the application as a standard application accompanied by a complete specification;
  • Provide details of the international filing date and international application number of the application;
  • Provide copies of any Notifications or filing receipts issued by WIPO in respect of the international application; and
  • Call IPONZ contact centre and request that the application be converted to a national phase application.

In an earlier post I comment on a proposed regime in which a patent applicant will make a single application to a trans-Tasman portal. The applicant will nominate New Zealand and/or Australia in the application. The trans-Tasman patent application will create a New Zealand application, an Australian application, or a pair of applications that is examined by the same examiner.

The new trans-Tasman portal will probably not have the same glitch and will allow patent applicants to enter national phase early. Until then I guess we are stuck with the workaround.

Tuesday, February 19, 2013

Research Affiliates and the unpatentable index

Is time running out?In Research Affiliates LLC v Commissioner of Patents [2013] FCA 71 (13 February 2013) a judge of the Federal Court of Australia dismissed an appeal by Research Affiliates LLC against two decisions of IP Australia. I cover the two decisions here and here.

Subject matter eligibility in Australia is based on whether or not an invention is a "manner of manufacture".

The judgment sets out some new approaches to assessing subject matter eligibility for business method claims. These approaches are based on the product of the claimed method, the description of that method in the body of the specification, and the extent of computer implementation.

The patent application

The invention involved securities investing, particularly the construction and use of passive portfolios and indexes. Under passive management or indexing, the securities in a portfolio are weighted by relevant market capitalisation weighting or equal weighting. The securities purchased for inclusion in the portfolio reflect the securites that are represented in a particular index.

The amount of each security that is purchased for inclusion in the portfolio affects the weighting of that security in the index. If the weighting given to a particular security in the index changes, a corresponding amount of the security is bought or sold to adjust the amount of that security held in the portfolio.

A stated disadvantage of market capitalization weighted passive management is that undervalued securities will be underweighted in the index and in the portfolio based on the index. At the same time, any overvalued securities will also be overweighted. A further disadvantage is that a portfolio based on market capitalization weighting follows every market, or market segment, variation.

Claim 1 of the application under consideration read 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 identify 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
(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.

The product of a method

The Court observed at [14] that a manner of manufacture must be construed as including:
  • the practice of making;
  • the process of making;
  • the means of making; and
  • the product of making.

The product of a process simply means something in which the new and useful effect may be observed. The something need not be a thing, in the sense of an article or object. It may be any physical phenomenon in which the effect, be it creation or merely alteration, may be observed.

It's important not to take a narrow view of what constitutes the product of a method, according to the Court at [15]. If a method is purely an idea, that method's product may be mere information, such that the method itself is then not patentable and is not a manner of manufacture. However, if the method or idea results in a new machine or process, or an old machine giving a new and improved result, that new process or result should be regarded as the product of the method and the method is patentable.

Furthermore, a new use of an algorithm may be a patentable invention. Even if there is nothing new about the mathematics of a claimed invention, if its application results in a commercially useful effect there may be a patentable invention.

A mathematical formula as such is not patentable. However if the claim is not for a mathematical formula in the abstract, but a way of using the mathematical formula in a process for producing particular effects, there may be a patentable invention.

Nothing more than data

The Court observed at [65] that a mere scheme, abstract idea or mere information is not patentable. Some physical effect is required. In some cases there will be a component physically affected or a change in state in a part of a machine. take for example:
  • the representation of a curve
  • the representation of Chinese language characters
  • the writing of information to a smart card

In this case the only physical result generated by the method of the invention was a computer file containing an index. The Court observed at [67] that an index is nothing more than a set of data. It is simply information. A set of numbers. No more a manner of manufacture than a bank balance represented as data in a bank's computer, written on a piece of paper, or kept in a person's memory.

When we are talking about a computer implementation, everything is just numbers. I guess what the Court is saying here is that the numbers don't mean anything. They have no relationship with real world tangible objects.

Personally I don't see the 'stark contrast' at [70] between writing particular information on a smart card on the one hand and writing an index to a computer file on the other. Maybe I'm missing something.

Tell us more

I suspect this judgment will be remembered most for the comments on what the description should say.

The Court observed at [68] that:
'While the Specification appears to be intended to create the impression of detailed computer implementation, the Specification says almost nothing about how that is to be done ... The discussion in the Specification provides no substantive detail regarding the implementation of the claimed method. The upshot of the discussion is merely that the method is implemented by a computer, but there is no disclosure of how that is to be done.'
It looks like the Court would have liked to see at [70]:
  • how data is accessed in step (a);
  • the nature of the processing undertaken in step (b) to identify the selection of assets;
  • how the weighting function is accessed in step (c);
  • how the relevant measure of scale is chosen in step (d)(i); or
  • how the weighting function is applied in step (d) to assign a weighting to each asset.

I thought the sufficiency of the description was a matter for, well, sufficiency of the description. Basing subject matter eligibility on the description rather than the claims seems to be a new approach in Australia.

Mere use of a computer

The Court seems to criticise at [67] the proposition that any computer-implemented scheme would be patentable, merely by reason of the fact that is happens to be implemented by a computer.

The implementation of this method by means of a computer was observed at [72] to be no more than the modern equivalent of writing down the index on pieces of paper. The mere use of a computer necessarily carries with it the writing of information into the computer's memory. This aspect of computer implementation, said the Court, is nothing more than the use of a computer for a purpose for which it is suitable.

The Court concluded at [73] that:
'while new developments in technology might be seen to widen the notion of what is patentable, the modern availability of computers as a standard means of implementing arithmetic or computational processes, which could have been implemented manually in the past, does not carry with it any broadening of the concept of a patentable invention.'
Further steps

Research Affiliates has 21 days to appeal this decision to the Full Federal Court of Australia. If this decision survives an appeal it will be interesting to see how it is interpreted by IP Australia.

[UPDATE: Research Affiliates applied for leave to appeal on 27 February 2013.]

Photo courtesy of author thinkpanama under Creative Commons licence.

Wednesday, February 13, 2013

Pan-African progress

The 20th Ordinary Session of the African Union (AU) Summit recently wrapped up in Addis Ababa, Ethiopia on 28 January 2013.

In my earlier post Out of Africa I observe that one of the items on the table in an earlier meeting in Brazzaville, Democratic Republic of Congo was a Pan-African Intellectual Property Organization (PAIPO).

On one hand there are already two regional intellectual property offices in Africa. These are the African Regional Intellectual Property Organization (ARIPO) and the Organisation Africaine de la Propriété Intellectuelle (OAPI). This would suggest there is no need for a third.

On the other hand there are some stated objectives set out in Article 5 of the draft text, which presumably the two existing regimes do not achieve. The objectives are as follows:
  • promotion of harmonisation of intellectual property laws of its [African Union] member states;
  • common administration and management services of intellectual property; and
  • vehicle for addressing political issues and developing African common positions relating to intellectual property matters.

It seems that PAIPO is still on the table. According to a press release from the recent Summit, the Heads of State of the African Union (AU) have decided to proceed with the Pan-African Intellectual Property Organization (PAIPO). The Economic Commission for Africa (ECA) is requested to convene a meeting of all stakeholders dealing with intellectual property in the implementation of the Decision by May 2013 Summit.

It will be interesting to see whether non-African stakeholders are involved in the process.

Sunday, February 10, 2013

Hen Dunking

A broody hen is really useful when you need to hatch some eggs. You catch the one that is most reluctant to get off her own eggs and put her on a pile of fertilised eggs that you want to hatch. A good broody hen is quite happy to sit on a bunch of eggs that she didn't lay herself. We call her the 'Nadine hen'.

We've done with hatching eggs for the summer. However, we still have a Nadine hen. She just sits on her nest and pecks me whenever I try and collect eggs. I knew that when she drew blood one time that we had to do something.

There are two ways to deal with a broody hen. One is to put her in a cage and hang the cage in a tree for a few days. We don't like to keep our hens in cages. Which leaves the other more direct approach. Dunking the hen in a pail of water.

Now I know where the expression 'madder than a mad hen' comes from!

It seems to have worked. I collected the eggs this morning and she got off her eggs quick smart. Either we have cured her broodiness. Or she knows she is going to get dunked if she pecks me again. Either way works for us.

Tuesday, February 5, 2013

The Twitter Cookie Jar

Cookie JarSocial media platforms like Twitter are a great way of getting your content out to a large audience. However, managing the content once it is out there can be a little challenging.

We see this in Agence France Presse v Morel 769 F.Supp.2d 295 (S.D.N.Y. 2011) involving a dispute between a photojournalist and a news agency accused of infringing copyright of his photos.

The full article is available at StopPress.

Morel is a professional photojournalist who has worked in Haiti for many years. He happened to be in Port au Prince on 12 January 2010 when an earthquake hit the city. He took some photos of some of the immediate devastation. He uploaded his photos on Twitpic, posted on Twitter that he had ‘‘exclusive earthquake photos,'' and linked his Twitter page to his Twitpic page.

Lisandro Suero, a resident of the Dominican Republic, copied the photographs and posted them on his own Twitpic page with no attribution to Morel.

Agence France Presse (AFP) is a French news agency that offers an international photo service to media worldwide, primarily newspapers. AFP downloaded Morel's photographs from Suero's Twitpic page and transmitted them to Getty, an image licensing company.

In the court case that followed, AFP said that it had an express licence to use Morel's images. In the alternative they said that they were third-party beneficiaries of a license agreement between Morel and Twitter. The Court found that AFP did not have an express licence to use Morel's content. Morel was not a third-party beneficiary either.

Social media is a good mechanism for getting material out to a wide audience. However, in particularly newsworthy cases, the distribution of your content can develop a life of its own.

There is a message here for media outlets and others who use others content. Just because content is available on a publicly accessible network does not mean that the content can be used for commercial purposes.

[UPDATE 22 December 2013 - a Federal Jury in New York City recently awarded Mr Morel US$1.2-million in damages for copyright infringement]

Photo courtesy of author W.D. Vanlue under Creative Commons licence.

Friday, February 1, 2013

Pitney Bowes denied printing patent

air mailIs printing information on a mail piece a patentable invention? Or is it an unpatentable abstract concept?

The Patent Trial and Appeal Board has just issued a decision on a United States patent application in Ex Parte Chrosny et al No 2011-003609 (PTAB Jan 21, 2013). Pitney Bowes is the owner of United States patent application 10/996,275. The application was filed back in November 2004. It involved a system and method for automatically selecting advertising slogans to be printed on a mail piece.

Claim 1 for example read as follows:
1. A method of printing an ad slogan on a mail piece, comprising:

establishing one or more date ranges and one or more pre-selected ad slogans, each of said one or more date ranges having one of said one or more pre-selected ad slogans corresponding thereto;

determining a current date, said current date being a date on which an ad slogan is to be printed on said mail piece;

determining whether said current date falls within a particular one of said one or more date ranges; and

if said current date falls within a particular one of said one or more date ranges, printing on said mail piece the one of said one or more pre-selected ad slogans that corresponds to said particular one of said one or more date ranges.
The issue before the Board was whether affixing an advertisement to a mail piece is insignificant post solution activity.

The Examiner considered this a close case as merely printing something in general is insignificant post solution activity. Ignoring the printing aspect leaves you with only an abstract idea which is not patentable.

Pitney Bowes argued that these claims are directed to more than an abstract idea. These claims automatically select an advertisement and then actually print that advertisement on a mail piece.

The Board agreed with Pitney Bowes that the whole invention is automatically putting the appropriate advertisement on an actual mail piece. In this context, the Board found this to be more than an abstract concept and hence patentable subject matter.

And then promptly rejected all claims as obvious and lacking novelty.

Photo courtesy of author 'smil under Creative Commons licence.
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