Tuesday, January 21, 2014

Twenty years on

Last week I passed a significant milestone. I've now been an intellectual property advisor for twenty years. I think that entitles me to dwell a bit on how things used to be and how they are now.


One of the biggest changes over the last twenty years has got to be our use of technology.

Back in 1994 I had a single cathode ray tube (CRT) screen connected to a mainframe in a server room. The 'computer' was used only for accessing the firm's electronic docketing and record system. It had been written in-house and was pretty state of the art back then.

On my first day the server was down. As I was being shown around I remember seeing the computer guy in the server room. Shirt sleeves rolled up. Red faced. Looking stressed. I thought back to my recent career choice to create stuff rather than fix stuff. If ever there was a defining moment that I had made the right choice then this was it.

There were no cellphones, no smart phones, no tablets. There was internet access from a single stand-alone PC running Mosaic. We had a telex machine. We eventually encouraged clients who still sent us telexes to send urgent instructions by fax instead.

Today our firm has a Bring Your Own Device (BYOD) policy. A bewildering selection of powerful mobile devices combined with secure, web-based technology means that our attorneys are able to work from virtually anywhere.

Patentable subject matter

We have seen a gradual widening of eligible subject matter, particularly in my field. The Hughes decision in 1995 is acknowledged as a landmark case in the treatment of computer-related inventions. We were able to point to an earlier Australian decision which the new Zealand Hearing Officer adopted the test for eligible subject matter as:

'Does the invention claimed involve the production of some commercially useful effect?'.
The Haddad decision in 2000 reminded us that the term 'manner of manufacture' still implies a situation which involves some sort of interaction with a real entity, or which achieves a tangible product or result.

Surge Miyawaki in 2005 involved a method of issuing an ear tag to identify an animal in a group of animals. The applicant averted a challenge by amending the claims to include a computer database. 

The Hearing Officer in two separate applications Coppereye and Maximum Availability in 2006 concluded that a database per se can be considered as analogous to a table or spreadsheet in which data is arranged in a manner which facilitates searching and information retrieval. Claims to the database were refused.

These two decisions are at odds with the later Microsoft decision in 2007 in which a patentable data structure arranged and presented data in such a way that it worked in cooperation with a computer program to produce an improved and commercially useful result.

In 2007 the first New Zealand Court decision on the patentability of business methods, Cool 123, noted that a business method could be the subject of a patent application. However, where the case for obviousness seems overwhelming it is difficult to find eligible subject matter.

In 2013 IPONZ allowed a patent on a technique for providing data insurance in Hodgkiss v Monument Insurance. The Hearing Officer commented that the invention was more than a mere computerization of a known process, which suggests that the actual contribution lay in more than just a computer program.


Long before its relaunch as the Intellectual Property Office of New Zealand (IPONZ), the New Zealand Patent Office operated out of a six story building 15 minutes drive out of the Wellington CBD. It shared a car park with a funeral parlor and was a mere stone's throw from both a liquor store and a fast food franchise.

Patent Office staff prepared abstracts of all allowed patents and printed them on cards the size of envelopes. There were stored in IPC order. Searching consisted of identifying a set of catch words describing an invention from a hard cover book, looking up the relevant IPC classes, and flicking through the cards in the relevant classes. I remember a sign displayed prominently above the cards warning us that a misplaced card could cost a million dollars.

My firm had 5 full time staff working out of space provided by the New Zealand Patent Office in its library. We would send search instructions out to our staff by morning courier. They would send us back search results that afternoon. I was there when we installed a fax machine at the Patent Office for our searchers to use.

Exam reports were largely handwritten, at least for trade mark cases. The Patent Office had a kind of form listing every possible rejection an examiner could raise against a case. Examiners simply worked their way down the form and checked most of the boxes.

There was a late filing box. It was a kind of slot through which you could post paper documents. Every morning Patent Office staff scooped up everything posted in the slot the day before and stamped it with yesterday's filing date. There was supposed to be an automatic gate on the slot that closed the slot at midnight. Nobody wanted to test whether or not the gate technology worked. And so began the tradition of late night dashes to the late filing box.

Legislative changes

Right now we are waiting for the New Zealand Patents Act 2013 to come into force in September. Prior to that there were only relatively minor tweaks made to the New Zealand Patents Act 1953.

The Patents Amendment Act 1992 had recently enabled New Zealand to join the PCT system. The Patents Amendment Act 1994 increased patent term from 16 years to 20 years. It also removed an obscure ground of rejection for perpetual motion machines. The Patents Amendment Act 1999 broadened the definition of 'convention country'. And then there was the Patents Amendment Act 2002, which allowed 'springboarding' for the benefit of generic pharmaceuticals manufacturers.

In the late 90s the Trans-Tasman Mutual Recognition Act 1997 and the equivalent legislation in Australia recognized the role of patent attorney in each country as equivalent occupations. Registered patent attorneys in New Zealand could now apply for registration in Australia and vice versa.

What now?

It's hard to predict what the profession will look like in another 20 years. A lot will depend on the types of inventions our clients come up with, the legislative framework we operate under, and the technology we use to help us advise our clients. None of which is likely to even remotely resemble what we have today.

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