Showing posts with label Computer programs. Show all posts
Showing posts with label Computer programs. Show all posts

26 July 2015

Judge in Australian ‘Software Patent’ Cases Has No Issue With Gaming Claims

Pace Kitty Slot MachineAustralian Federal Court Justice John Nicholas has issued a decision in which he declares himself ‘satisfied’ that claims directed to the awarding of prizes by casino gaming machines satisfy the ‘manner of manufacture’ requirement for patent-eligibility in Australia (Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited [2015] FCA 735).

Justice Nicholas is one of three judges – the other two being Justices Bennett and Kenny – responsible for deciding the appeals in the Research Affiliates and RPL Central ‘software patent’ cases.  The Research Affiliates appeal has already been decided, with the court determining unanimously that a computer-implemented scheme for generating a financial index is not patent-eligible in Australia (see Australia’s ‘Alice’: Appeals Court Denies Business Method Patent).  The RPL Central appeal was heard on 7 May 2015, and a decision is keenly awaited (see ‘Software Patents’ Back Under the Appeals Court Microscope).

As regular readers will already be aware, I am involved in the RPL Central case, and was present at the hearing in May.  It appeared to me that, of the three judges, Justice Nicholas was the most sceptical of the patent-eligibility of the claims in that case.  Having spoken to others who were also present, I do not believe I am alone in this view.  I am therefore a little surprised at how uncritical the judge has been of the claims in the Aristocrat case.  The Full Court in Research Affiliates referred positively the US Supreme Court’s decision in Alice Corporation v CLS Bank, and yet I do not think that Aristocrat’s claims would be considered patent-eligible in the US under the Alice standard.

Perhaps Justice Nicholas is not as sceptical of ‘software patent’ claims as his apparent criticisms during the RPL Central hearing might suggest?

10 May 2015

‘Software Patents’ Back Under the Appeals Court Microscope

Artificial IntelligenceOn Thursday, 7 May 2015, a full bench of the Federal Court of Australia, comprising Justices Bennett, Kenny and Nicholas, heard the appeal of the earlier single-judge decision in RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871.  The case relates to Australian innovation patent no. 2009100601, which covers a computer-implemented invention (i.e. a so-called ‘software patent’) in which a computer system is used to centralise and automate mechanisms for prospective students to provide evidence of their prior education and experience for the purpose of potentially receiving course credit under a ‘recognition of prior learning’ (RPL) procedure.

Specifically, the case addresses the question of whether the computer-implemented evidence-gathering method and system is eligible for patent protection under the ‘manner of manufacture’ test for subject matter in Australia.

As always when I write about this case, I need to point out that I am not an impartial observer, and that I have to be reasonably circumspect in what I say about the matter.  RPL Central Pty Ltd is a client of my employer, Watermark Intellectual Asset Management.  I drafted the patent specification which is under scrutiny in the case.  My colleagues within Watermark’s IP Law firm have been running the Federal Court appeals on behalf of RPL Central.

However, my involvement does mean that I was in court for the hearing, and I am therefore in a position to provide a brief report on the proceedings.  For the most part, the parties were in furious agreement on the relevant legal principles, with the differences lying primarily in the way each side contended that these should be applied to the RPL Central invention.

18 January 2015

2015 in Preview – Predictions for the Year Ahead

Crystal BallLast week I looked at the year just passed, and compared my predictions with reality.  This week I want to look at the coming year in patents, to preview some anticipated developments, and to make new predictions for 2015.

Here, in brief, are some of the developments that I will be watching this year:
  1. the application to the High Court by Yvonne D’Arcy, for special leave to appeal the Full Federal Court’s decision in the Myriad gene patents case;
  2. the appeal to the Full Federal Court by the Commissioner of Patents in the RPL Central case, in relation to the patent-eligibility of computer-implemented inventions;
  3. the two Australian patent infringement cases involving non-practising entities Upaid and Vringo;
  4. the High Court has also been asked to review the Full Federal Court’s decision in AstroZeneca v Apotex [2014] FCAFC 99, including the analysis of the ‘starting point’ for assessing inventive step; and
  5. in the US, the Patent and Trademarks Office will continue ‘refine’ its guidelines for the examination of patent-eligibility, while there will doubtless be further attempts to pass new patent law reforms.
Read on for my further thoughts and predictions on these issues.

07 December 2014

Are Subject Matter Rejections Hurting the Patent System?

BandaidsThe primary requirements for an (alleged) invention to be patentable are that it must relate to eligible subject matter (e.g. not be a law of nature, mathematical equation or abstract idea), it must be new (i.e. possess novelty) and it must not be obvious (i.e. must involve an inventive step).

Subject matter eligibility is currently highly contentious in many jurisdictions.  As recent decisions of the US Supreme Court (in the Alice and Myriad cases) and the Australian Federal Court (in the Research Affiliates and Myriad cases) demonstrate, the most strongly contested subject matter relates to the areas of business processes, computer software and biotechnology. 

But even so, qualification as patent-eligible subject matter remains a threshold test, and should not be a substitute for the proper evaluation of an invention for novelty and inventiveness.

The problem with evaluating novelty and inventive step is that it often involves hard work.  To show that something is not new, or that it is obvious, requires evidence of prior art, which in turn may require diligent searching, extensive reading, and careful construction of legal and technical reasoning to explain why the requirements for patentability are not satisfied.

It is, therefore, so much easier if an invention can be knocked out at the first hurdle, and be deemed fundamentally ineligible for patent protection, without having to go to all the trouble of conducting a comprehensive prior art search.

Recent developments in various jurisdictions (e.g. the US, Australia and the UK) suggest that, in ‘difficult’ fields of technology, the cart is getting put before the horse.  Subjective evaluations of the ‘merit’ of an invention, i.e. that it perhaps seems unworthy of patent protection, may be leading decision-makers at all levels to turn too quickly to subject matter grounds as a basis for rejecting claims.  Legal reasoning may therefore be developed in order to arrive at the desired outcome, without sufficient regard to consistency across different cases. 

Subject matter is becoming a form of ‘obviousness by stealth’ as courts start looking for the ‘inventive contribution’ made by a claimed invention as a basis for assessing eligibility.  The case law is becoming increasingly incoherent, as decision-makers try to rationalise their own findings in light of prior decisions that are themselves inconsistent.  Certainty is eroded as a result, and applicants, patentees and other stakeholders are losing faith in a system that appears increasingly capricious.  I also suspect that the quality of prior art searching may be suffering, with examiners now relying on subject matter rejections in cases that appear ‘too hard’ to search effectively.

23 November 2014

Research Affiliates: A ‘Hard’ Case Making Bad Law

Chaos and OrderIt is sometimes said that ‘hard cases make bad law’.  This is not actually generally true, and good and bad law emerges from a wide variety of different cases.  Perhaps, in fact, the quality of judges, or the quality of argument presented at trial, are more important factors than the difficulty of the case.

That being said, ‘hard’ cases do present judges with special challenges.  In this context, a hard case is one in which the most literal or straightforward application of the law – i.e. the binding precedents and relevant statutory provisions – is liable to produce a result that may strike the judge as illogical, unfair, absurd, unjust, or just plain wrong.

The temptation in such cases must be very great to try to find a ‘creative’ approach to applying the law in order to make the legal outcome match the subjectively ‘right’ decision.

Patent law is not immune from such ‘hard’ decisions.  Sometimes, for example, an alleged infringer’s efforts to ‘work around’ a patent, and escape infringement on a technicality, are so flagrant that judges are inclined to find ways to broaden the interpretation of patent claims in order to capture the infringer’s variation.

So what would happen if a judge (or, indeed, three judges) were to look at an invention and think ‘surely that cannot be eligible for a patent?’  And what if they then looked at the current state of law and found that, in fact, a literal and straightforward application of the law could well lead to the conclusion that the suspect invention is patent-eligible?  The answer might be that you end up with a decision like that of the Full Court of the Federal Court of Australia in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150.

10 November 2014

Australia’s ‘Alice’: Appeals Court Denies Business Method Patent

No computerIn a unanimous decision, a Full Bench of the Federal Court of Australia has ruled that the ‘substance’ of an invention trumps the form in which it is claimed, dismissing Research Affiliates’ appeal against a decision of a single judge of the court, which found its invention, relating to the construction and use of passive portfolios and indexes for securities trading, ineligible for patent protection: Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150.

The decision canvasses many of the same issues tackled by the US Supreme Court in its recent Alice Corporation v CLS Bank ruling.

In essence, the Australian court addressed the question of whether an invention that would otherwise be ineligible for patent protection – in this case, a scheme for generating a financial index which can be used, for example, to measure the rise and fall in value of an investment portfolio – becomes patentable when implemented in software.  This has been an open question in Australia since the court’s 2006 decision in Grant v Commissioner of Patents [2006] FCAFC 120, in which it found that an asset protection method was ineligible for patenting.  In that case, however, the court was not required to consider whether the outcome may have been different had all or part of the method been performed using a computer.

In the Grant case the court stated that, for a claimed invention to be patent-eligible, a ‘physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required’.  Where a computer is involved there is always, of necessity, some physical effect or change of state, at least within the electronics of the machine.  The question that the court has not previously addressed is whether or not this is sufficient to confer patent-eligibility? 

In Research Affiliates, the court has answered this question in the negative, finding that describing a scheme – no matter how ingenious it may be – that is not itself eligible for patenting, and merely giving directions to implement it on a standard computer is not sufficiently transformative.

However, while – subject to any appeal to the High Court – this decision would seem to spell an end to ‘do it on a computer’ patent claims in Australia, the Full Court has been cautious (certainly more so that the US Supreme Court in its recent Alice v CLS Bank decision) to ensure that most computer-implemented inventions remain patent-eligible in Australia.

31 August 2014

‘Software Patents’ – Time to End the Uncertainty!

STOPNobody – other than the most deluded fantasists among the anti-software-patents brigade – actually believes that all computer-implemented inventions are, or should be, unpatentable.  To deny patent protection to an invention merely on the basis that it involves the use of a programmed computer leads to absurd outcomes, such as an improved control system for an industrial process being patentable when implemented using gears and pulleys, or using resistors, capacitors and transistors, but not if it is implemented by way of a microprocessor programmed to provide precisely the same functions.

This is a result of the kind of muddled thinking that treats ‘digital’ as a magical incantation rather than what it actually is – another (admittedly powerful) tool in the engineer’s toolkit.

Having said that, it is also apparent that only the most deluded pro-patent fantasist would believe that absolutely anything created on a computer is, or should be, patentable.  In Europe, and many other jurisdictions with similar provisions (including, very soon, New Zealand), patents are expressly prohibited on computer programs ‘as such’.  The recent Alice decision by the US Supreme Court clearly establishes that there are at least some forms of computer-implemented financial processes that are nothing more than ‘abstract ideas’ accompanied by directions to ‘do it on a computer’, and thus unpatentable.

So, we can conclude with some certainty that some computer-implemented inventions are patentable, and some are not.  The problem is that nobody – not the courts, not the national patent offices, not the law-makers – seems to wish to take any responsibility for deciding exactly where to draw the line.  I have no idea where the line is, despite the fact that I read and write about this subject all the time, and practice in this area on behalf of clients every day.  I do not know anyone, inside or outside the profession, in Australia or anywhere else, who knows where the line is – and I would not trust or choose to work with anyone who claims that they do!

27 July 2014

Is Australian Court Looking to Uncle Sam on Patent-Eligibility?

Uncle SamThe question of what kinds of things should be eligible for patent protection is one that has been running in parallel in Australia and the US in recent years. 

Methods of medical treatment came under scrutiny of the US Supreme Court in Mayo Collaborative Services v Prometheus Laboratories, Inc and the Australian High Court in Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (see High Court Rules Methods of Medical Treatment Patent-Eligible). 

The Supreme Court considered gene patents in Association for Molecular Pathology v. Myriad Genetics, Inc, while a corresponding Australian patent came before the Australian Federal Court in Cancer Voices Australia v Myriad Genetics Inc (see Australian Federal Court Declares Isolated Human Genes Patentable). 

And the recent Supreme Court decision on computer-implemented business processes, in Alice Corporation Pty Ltd v CLS Bank International addresses similar issues to those tackled by the Australian Federal Court in Research Affiliates, LLC v Commissioner of Patents (see Research Affiliates Loses Appeal Against Business Method Rejection).

The Australian Myriad and Research Affiliates cases are currently both on appeal to full benches of the Federal Court.  The Myriad appeal was heard on 8 August 2013, less than two months after the US Supreme Court handed down its corresponding decision.  The Research Affiliates case was heard on 18 November 2013, and in the intervening period the Supreme Court has managed to hear and decide the Alice case.  We continue to await decisions from the Australian court in both the Myriad and the Research Affiliates cases.

While the delays in deciding these cases are not inconsiderable, they do not appear to be particularly unusual by current standards of the Full Court – another recently-decided patents appeal, Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73, was heard on 26-27 August 2013, with judgment handed down on 19 May 2014.

06 July 2014

Will US Alice Decision Influence the Australian Federal Court?

Alice in Oz - A Musical Comedy in Two ActsA Full Bench of the Australian Federal Court heard oral arguments in the Research Affiliates appeal (on patent-eligibility of a computer-implemented business method) all the way back on 18 November 2013.  More than seven months later, we are still waiting for a decision.

It is possible that the court was waiting for the US Supreme Court to rule in Alice v CLS Bank before finalising its opinion(s) in Research Affiliates.  Whether or not that is the reason for this long delay, the fact is that Alice has been decided, and it is therefore almost inconceivable that the judges in the Australian case would not review the US decision and assess whether there is any aspect of the reasoning that may be applicable in Australia.

So, is there?

I am sure that some will disagree with me, but I think that maybe there is – despite significant differences between the US law on patent-eligibility (based on 35 USC §101) and that of Australia (based upon the venerable test of ‘manner of manufacture’).  While the legal criteria may be different, you would have to postulate that the purpose of the patent systems in the two countries was manifestly dissimilar for the actual outcomes of applying the criteria to produce significantly different results.

The Full Court has itself said as much, in Grant v Commissioner of Patents [2006] FCAFC 120, at [24]:

While the development of US patent law is derived from the Constitution of the United States rather than the Statute of Monopolies … the policy behind the two provisions is the same. In both jurisdictions, the courts have confirmed that a broad approach to subject matter should be taken in order to adapt to new technologies and inventions but that does not mean that there are no restrictions on what is properly patentable.

So what might the Full Court take from Alice, and how might it apply the US reasoning under the Australian ‘manner of manufacture’ test?

22 June 2014

Most Software Patents Will Survive US Supreme Court Ruling

Alice meets the DodoOn 19 June 2014 the US Supreme Court handed down its keenly-awaited decision in Alice Corporation Pty Ltd v CLS Bank International, ruling that Alice’s claims directed to a computer-implemented scheme for mitigating settlement risk in financial transactions are ineligible for patent protection.

The case was widely regarded as being about the patentability of software, perhaps because the question presented to the Court by Alice was ‘whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter…’.

In the final reckoning, however, the Supreme Court’s unanimous opinion (authored by Justice Thomas) avoids addressing this broad question, establishing only that Alice’s claims do no more than ‘simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer’, which is insufficient to render the ineligible abstract idea patentable.

Based on the reasoning of the Court in Alice, claims directed to computer-implemented inventions (i.e. ‘software patent’ claims) which do more than simply apply an abstract idea, such as a financial scheme, using conventional computer hardware, are still eligible for patent protection.  The Court gave the example of claims directed ‘to improv[ing] the functioning of the computer itself or effect[ing] an improvement in any other technology or technical field’ as being distinguishable from the situation in Alice.  However, there is no suggestion that this is intended as an exhaustive category of patent-eligible software-based inventions.

Most software that performs some new and useful function, over and above the mere application of some abstract idea, therefore remains patentable in the US.

Interestingly, the Supreme Court’s decision appears to draw the US law on patent-eligibility of computer-implemented inventions closer to the approach taken in Europe, where excluded subject matter, such as business methods, are disregarded when assessing whether a claim is directed to a patentable ‘invention’.  A similar tendency can be observed in last year’s Research Affiliates decision of the Australian Federal Court (though a ruling in an appeal of that decision is currently pending), while the new New Zealand patent law, due to commence in September 2014, contains a European-style exclusion for computer programs ‘as such’.  It may well be that we are seeing a degree of international consensus emerging in relation to the patent-eligibility of computer-implemented ‘business methods’, which would be welcome.

01 June 2014

Will the Federal Court Resolve Patent-Eligibility of Business Methods?

Questioning stick figureIt has now been over six months since a Full Bench of the Federal Court of Australia heard Research Affiliates’ appeal against the rejection of its patent applications relating to the construction and use of passive portfolios and indexes for securities trading.  The rejections were made on the basis that the claims of the applications were not directed to a ‘manner of manufacture’ – the test under the Australian law for whether a claimed invention comprises patent-eligible subject matter.

While we await a decision in the appeal – as well as a decision from the US Supreme Court in Alice Corporation v CLS Bank, heard back in March – I thought it might be a good opportunity to review the current unsatisfactory state of affairs in relation to so-called ‘business method’ patents.

The patent-eligibility of ‘business methods’ – including, but not limited to, processes implemented with the aid of computer software – is a contentious issue in many jurisdictions.

There is arguably an emerging consensus that methods of organising human affairs which involve only the manipulation of legal or financial instruments, without technological assistance, are not generally eligible for patent protection, even in those countries with a liberal approach to patentable subject matter.

However, when technical means are employed – typically in the form of a programmed computer – in the implementation of an otherwise unpatentable process, the position remains unresolved.  In the US, for example, the Court of Appeals for the Federal Circuit (CAFC) seems irreconcilably split over the issue of whether technical implementation of a method is sufficient, in itself, to satisfy the patent-eligibility requirements of 35 USC § 101.  In the Research Affiliates  case, the Full Federal Court in Australia is grappling with the same issue.

11 May 2014

Oracle v Google: Copyright in APIs Explained for Non-Programmers

Android InvadersOn 9 May 2014, the United States Court of Appeals for the Federal Circuit (CAFC) issued its opinion in Oracle America, Inc v Google Inc. [PDF 342kB], in which it overturned the earlier ruling by District Judge William Alsup that Oracle's Java API declaring code was not protected by copyright.  I will explain what that means, for non-programmers, below.  But the significant point of this judgment is that Google’s Android operating system – now by far the most popular smartphone operating system globally – has appropriated elements of Oracle’s Java programming language environment that are subject to copyright protection.  Potentially, therefore, Google may be found to to have infringed copyrights owned by Oracle.

This is a blog about patents and innovation, and I do not usually write about copyright.  But the Oracle/Google litigation started out as a combined patent and copyright matter, and one of the most popular early articles on this blog was about this particular dispute.  The patent issues have since fallen by the wayside, but I have continued to follow the fortunes of this case out of personal interest.

Although the decision in this appeal is technically a loss for Google, it is far from being the end of the story.  The case is now going to return to the United States District Court for the Northern District of California for a further trial, to decide whether Google’s use of Oracle’s programming code is covered by a ‘fair use’ defence.  If so, then Google will be off the hook.  If not, then it will probably owe Oracle an absolute shed-load of cash in damages!

I want to try to explain what this case is all about, and why it is really important, in the simplest terms possible, assuming that many of my readers are not programmers.

23 November 2013

Australian Appeals Court Hears ‘Business Method’ Patent Case

Yes, this is literally a 'stock photo'!Last Monday, 18 November 2013, I attended the Full Federal Court hearing of Research Affiliates’ appeal against the decision of a single judge of the court earlier this year to uphold the Australian Patent Office’s rejection of its patent applications relating to the construction and use of passive portfolios and indexes for securities trading.

The parties to the hearing were (of course) Research Affiliates, LLC and the Commissioner of Patents.  The three judges on the Full Bench were Justices Bennett (best known for presiding over the Australia Apple v Samsung litigation), Kenny and Nicholas.

The sole issue in the appeal is whether or not Research Affiliates’ patent claims, directed variously to computer-implemented methods and computer systems for ‘generating an index’, define patent-eligible subject matter (i.e. a ‘manner of manufacture’ under Australian law).  It has not been contended by the Commissioner of Patents that the claims lack novelty or an inventive step, or that the patent specification is deficient in any other way.

The patent-eligibility of so-called ‘business methods’ – including, but not limited to, processes implemented with the aid of computer software – is a contentious issue in many jurisdictions, including Australia.  There is arguably an emerging consensus that methods of organising human affairs which involve only the manipulation of legal or financial instruments, without technological assistance, are not generally eligible for patent protection, even in those countries with a liberal approach to patentable subject matter.  However, when technical means are employed, typically in the form of a programmed computer, in the implementation of an otherwise unpatentable process, the position remains unresolved. 

The Full Court will need to tackle this issue head-on in the Research Affiliates case.

05 November 2013

It’s ‘Business as Usual’ on Software Claims at IP Australia

Keep Calm and Carry OnAnybody who thought that the success of RPL Central in its appeal against revocation of its innovation patent by IP Australia would change current Patent Office practice will, I am afraid, be sorely disappointed.

As most readers will be aware, there have been two decisions by the Federal Court of Australia this year in relation to the patent-eligibility of computer-implemented inventions, both resulting from appeals against rejection by the Commissioner of Patents.  The first related to two rejected patent applications by Research Affiliates, LLC, in which the rejection was upheld by Justice Emmett.  The second, as noted above, was the successful RPL Central appeal decided by Justice Middleton.

Research Affiliates is seeking to appeal its loss to a Full Bench of the Federal Court, while the Commissioner has applied for leave to appeal her loss in the RPL Central case.

This leaves applicants – and the Patent Office – in a difficult position.  The two Federal Court decisions are equally binding on patent examiners.  And, although appeals are pending in both cases, they nonetheless currently reflect the state of the law in Australia.  Arguably, the correct approach in this situation would be to determine, on a case-by-case basis, whether claims under consideration are ‘more like’ those in the Research Affiliates applications, or those in the RPL Central patent, and either reject or accept accordingly.

I have found, however, through recent experience, that this is not what is happening.  In practice, IP Australia’s current approach is to continue rejecting applications on the basis of the Research Affiliates decision, effectively ignoring the authority of RPL Central.

13 October 2013

Commissioner Of Patents Applies to Appeal RPL Central Decision

Symbols of JusticeOn 30 August 2013, Justice Middleton in the Federal Court of Australia upheld the appeal by RPL Central Pty Ltd against the decision of the Commissioner of Patents to revoke an innovation patent relating to an automated information and evidence gathering system.  The Commissioner had determined that the patent was invalid on the ground that it did not relate to a patent-eligible ‘manner of manufacture’.

On 25 September 2013, the Commissioner filed an application with the Federal Court for leave to appeal Justice Middleton’s decision (the case is number VID1023/2013 in the Victorian Registry of the court).

As I have pointed out on previous occasions when reporting on this case, I am not an impartial observer, nor am I at liberty to reveal all that I know about the status of the matter, or to express all of my true thoughts and opinions.  RPL Central Pty Ltd is a client of my employer, Watermark Intellectual Asset Management.  I drafted the patent specification which is under scrutiny in the case.  My colleagues within Watermark’s IP Law firm ran – and continue to run – the Federal Court appeal.

31 August 2013

At Last – ‘Software Patent’ Appeal Upheld in Australian Court

RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871 (30 August 2013)

Champagne uncorkingAppeal – from opposition decision of the Commissioner of Patents – patentable subject matter – whether computer-implemented information system and process a ‘manner of manufacture’

Justice Middleton, in the Federal Court of Australia, has found the claims of an innovation patent relating to an automated information and evidence gathering system to relate to a patent-eligible ‘manner of manufacture’.

I usually put any disclaimers or disclosures of interest at the bottom of a post, but on this occasion I am putting them right up-front (although for some readers, at least, this will not be news).

RPL Central Pty Ltd is a client of my employer, Watermark Intellectual Asset Management.  I drafted the patent specification which is analysed by Justice Middleton in forensic detail in RPL Central Pty Ltd v Commissioner of Patents.  My colleagues within Watermark’s IP Law firm ran the Federal Court appeal against the Patent Office decision finding all of the patent claims to be invalid on subject-matter grounds (i.e. not for a ‘manner of manufacture’ under the Australian law).  I was involved throughout the process, even joining the lawyers in court last December.

I am therefore, not even remotely, an unbiased observer in this case, and I am openly delighted – for myself, my colleagues, Counsel who acted in the matter, and our client – that Justice Middleton upheld the appeal.  I am also relieved that my work has (so far) survived the scrutiny to which it has been subjected.  I have to say, also, that it is a somewhat surreal feeling to see words and drawings that I produced now reproduced in a Federal Court judgment.  In the overall scheme of things, so few patents actually become the subject of court proceedings that many practitioners may go their entire careers without this happening to them.  Most, I dare say, would be glad of this!

29 August 2013

New Zealand Finally Gets a Modern Patent Law (With Software)

FireworksOn 28 August 2013, the New Zealand Parliament finally passed the bill which will henceforth be known as the Patents Act 2013.

This is actually a fairly momentous event – and not principally because of the supposed ‘software patent exclusion’ (which I discuss further below).  It is mostly significant because it means that New Zealand will finally have patents legislation which is in line with most of the world’s developed nations, rather than a law dating back to just a few years after the Second World War.

The current patent law in New Zealand is set out in the Patents Act 1953, i.e. a 60-year-old piece of legislation, which was itself based on the 1949 UK Act.  Australia also had laws based on the old UK Act, in the Patents Act 1952, which was replaced over 20 years ago by the current legislation, the Patents Act 1990.

So when the existing New Zealand patent laws came into effect, the exciting new inventions of the day included the transistor (1947), Velcro (1948), super glue (1951) and the black box flight recorder (1953).  While the world has moved on somewhat since then, the New Zealand patent laws have not!

28 August 2013

A Conversation with the Commissioner of Patents (Part 3)

CommunicatingIn the first of this series of articles documenting my recent conversation with the Australian Commissioner of Patents, and Deputy Director General of IP Australia, Fatima Beattie, we learned a bit about her about her background as a chemical engineer working with steel, about how she came to the role of Commissioner, and about what the job involves on a day-to-day basis. 

In the second part of the interview, we spoke about the law reform process – what has already been achieved through the Raising the Bar amendments, the further reforms which are currently ongoing, and the opportunities for future reform.

In this third, and final, part of the discussion we speak about the patent-eligibility of contentious subject matter such as computer-implemented inventions, business processes, and genetic materials, as well as the challenges facing the patent system over the coming years.

24 August 2013

Upaid – Another Candidate for a Down-Under Troll?

Upaid v TelstraUpaid Systems Ltd, a company incorporated in the British Virgin Islands, has sued Australia's largest telecommunications carrier, Telstra, for infringement of two patents relating to making online purchases from mobile devices.

To my knowledge, the law suit filed on 21 August 2013 was first reported in the Australian Financial Review by technology journalist James Hutchinson (@j_hutch), who avoided the term ‘troll’.  Others, however (e.g. at ZDNet and iTWire have shown less restraint.

So, is Upaid a patent troll?

I have expressed the opinion previously that the classic patent troll business model is a form of litigation abuse which is not viable within the Australian system.  I also firmly believe that it is not productive to define ‘patent troll’ so as to broadly encompass all so-called ‘non-practising entities’ (NPEs).  Just because a company does not actually make and sell products embodying its patented inventions should not preclude it from nonetheless monetising them through licensing to others who do. 

To insist upon this is akin to requiring songwriters either to sing their own songs, or to give them away freely for others to record and profit from.  Just as you do not need to have a pleasant singing voice to write a good song, you do not need to have the capability to successfully commercialise your ideas in order to come up with good inventions.

Upaid actually developed the inventions covered by the patents on which it is suing Telstra back in the late 1990's and early 2000's, but failed to bring any product of its own to market.  Only then did it turn to an alternative business model based on licensing and enforcement of its patents.  So in this sense, at least, Upaid is certainly not the worst kind of troll, which is an entity that acquires dubious patents from others (often at fire-sale prices) and then uses them to extort payments from operating companies under threat of expensive litigation, regardless of the strength or applicability of the patents.

But, even so, is Upaid any kind of troll?  And if so, what are its prospects of making money in Australia?

09 May 2013

New Zealand Resolves ‘Software Patent’ Impasse

Computer gearsIf you read what has been written in the media today (e.g. in The New Zealand Herald, Forbes, The Register, and ZDNet, to name just a few who have jumped on the bandwagon) you might think that New Zealand has just outlawed ‘software patents.’

If so, then you would probably be, strictly speaking, mistaken.  As I shall explain, it is quite likely that a wide variety of computer-implemented inventions will continue to be patentable in New Zealand, assuming the Patents Bill passes in the proposed form.  However, it is also true that many of the types of ‘software patents’ which cause the greatest concern to advocates of free and open source software (FOSS) will be excluded under the proposed provisions, just as they are in Europe.

However, it appears that the amendment put forward by aptly-named Commerce Minister Craig Foss in a new Supplementary Order Paper (SOP) is the result of an extended process of consultation behind the scenes, which has resulted in it receiving broad-based support across the New Zealand IT industry, and political opponents of the previous version of the provision (including Labour MP Clare Curran, who rather hyperbolically refers to the addition of what amounts to a clarification as ‘a humiliating back down’ by the Government).

As I have explained previously, the New Zealand Government had adopted a ‘European-style’ approach to software patents, excluding computer programs from patentability, but ‘only to the extent that a patent or an application relates to a computer program as such’.  Those two little words – ‘as such’ – which also appear in the European Patent Convention, and corresponding national laws, were the cause of great consternation among opponents of software patents, such as the New Zealand Open Source Society (NZOSS) accusing Minister Foss of throwing Kiwi software developers ‘under a bus’ (yes, hyperbole does seem to be par for the course over in New Zealand).

But even though the two evil words remain in the latest SOP, NZOSS is now back on speaking terms with Mr Foss, proclaiming itself ‘gratified by the government's willingness to work with the software industry to reach this stage’.

More importantly, the fact that the New Zealand Government has managed to find an acceptable compromise means that the Patents Bill should now be able to proceed through the remainder of its passage into law.  I can only agree wholeheartedly with NZOSS that this update to the creaky old Patents Act 1953 is long overdue.

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