Thursday, May 31, 2012

Copyright enforcement: The fat lady sings

Fat lady sings
In an earlier post I reported on an ultimatum laid down by the Recording Industry Association of New Zealand (RIANZ). The Association had instructed ISPs Telstra Clear and Vodafone respectively to send final copyright notices to customers. Both notices contained allegations of illegal download of music.

The DomPost reports that the deadline for RIANZ to take either case to the Copyright Tribunal has passed. A Justice Ministry spokesman has confirmed that the Copyright Tribunal has received no applications for enforcement action.

So the fat lady has sung. The enforcement notices have expired, as have the detection and warning notices. The alleged infringers now have clean slates.

We can only speculate why RIANZ didn't proceed to the Copyright Tribunal, and what effect this will have on file sharing activity that infringes copyright.

The Ministry of Economic Development (MED) issued a Copyright Fee Review discussion document earlier this year. The closing date for submissions was 30 April 2012. I think the review will provide interesting information about how this scheme is working generally.

Photo courtesy of author Tara R. under Creative Commons licence. 

Tuesday, May 29, 2012

Brunei implements new patent law

Flag Brunei
I came across this notification posted by my INTA buddy Denise Mirandah.

Brunei Darussalam has implemented a national patent system. The new Patents Order came into force on 1 January 2012.

Under the previous legislation patent protection was obtained by re-registration of a granted UK, European Patent Office (designating UK), Malaysian or Singapore patent. The re-registration application had to be filed within three years from the date of issue of the original grant.

There are subject matter exclusions under the new legislation. These include:
  • method of treatment of the human or animal body by surgery or therapy; and
  • diagnosis practiced on the human or animal body.

All other inventions, including business methods and software/computer-implemented inventions, can be patented if they meet the usual patentability requirements of novelty, inventive step and industrial applicability.

The standard for novelty under the new law is absolute novelty. This means that an invention is only novel if it has not been publicly disclosed by use or by written or oral description or in any other form worldwide before the effective filing date.

There are some grace period provisions that allow an application to be filed within 12 months of disclosure. The grace period is available if:
  • disclosure was due to or made in consequence of the matter having been obtained unlawfully or in breach of confidence by any person; or
  • disclosure was due to or made in consequence of the inventor displaying the invention at an international exhibition; or
  • disclosure was due to or made in consequence of the inventor describing the invention in a paper read by him or another person with his consent before any learned society or published with his consent in the transactions of any learned society.

Patent term is 20 years from the filing date. Annuities are payable yearly starting from the fifth year. A 6-month grace period is available for the late payment of annuities.

I understand that Brunei has acceded to the Paris Convention, but not the Patent Cooperation Treaty. However, the new legislation includes provisions that will allow for the processing of PCT applications when Brunei has acceded to the Treaty.

Photo courtesy of author erjkprunczyk under Creative Commons licence. 

Monday, May 28, 2012

BPAI round-up

Mens Briefcase
This round-up of recent decisions of the US Board of Patent Appeals and Interferences (BPAI) focuses on recent cases involving issues of patentable subject matter.

Compilation or arrangement of data

In Ex Parte Baumgartner et al, No. 2009-015143 (BPAI May 3, 2012) we saw IBM Corporation appear before the Board of Patent Appeals and Interferences with a machine readable medium that stores a design structure used in a design process.

The Examiner had asserted that the claimed machine readable medium only stored data representing a current mirror circuit. The Examiner felt the data was non-functional descriptive material and therefore directed to non-statutory subject matter.

The Appellants said that the "play back" of a design structure results in the creation of a specific circuit having specific functionality. When the claimed "design structure" is played back on a fabrication facility computer, said the Appellants, it will permit the functionality of the data structure to be realised. This, according to the Appellants, indicated that the claims recite functional descriptive material.

The Board found that the claim term "a design structure" could be construed as merely a text file, an image, or simply data. The design structure was nothing more than a compilation or arrangement of data. This was in addition to the observation that "a machine readable medium" encompassed a transitory, propagating signal.

Tied to a computer

Ex Parte Bhatti et al No. 2010-008008 (BPAI April 26, 2012) involved what the Appellants described as a "system for providing product consultation using a transmitted image."

The Examiner had objected to claim 30 because it failed to tie the method to a particular machine or apparatus and further failed to transform an article to a different state or thing.

The Appellants argued that the claim was tied to an apparatus because the claim recited a "computer-implemented method" and therefore the claim was tied to a computer.

The Board agreed with the Appellants. They observed that the claim:
"recites receiving a captured image and detecting colour regions based on a comparison of the captured image values to a set of predetermined reference colour values. These steps require a particular machine or device because the captured image presents the underlying values that [are] used in the comparison set and a particular machine or device is required to decode the image to ascertain these values."
Mental processes

Ex Parte Lynch et al No. 2010-001323 (BPAI April 15, 2012) involved a method for compressing data. The Examiner had said that the claims "recite the mere manipulation of data or an abstract idea, or merely solve a mathematical problem".

The Board in my view took an unreasonably tough line on this one. They looked to the underlying invention for patent-eligibility purposes (CyberSource v Retail Decisions Inc) and concluded that the subject matter of the claims encompasses unpatentable mental processes. The claimed steps of:
"receiving, determining, performing, storing, communicating, analyzing, choosing, and deriving can be performed in the human mind or by a human using a pen and paper."
The Appellants argued that the limitations of claim 1 "constitute a useful feature that provides a tangible real-world result". On this point the Board observed that:
"[w]hile looking for a useful, concrete and tangible result may in many instances provide useful indications of whether a claim is drawn to a fundamental principle or a practical application of such a principle, that inquiry is insufficient to determine whether a claim is patent-eligible under [35 USC] 101".
Data structure per se

Ex Parte Nyman at al No. 2009-013379 (BPAI April 29, 2012) involved an invention relating to routing Simple Object Access Protocol (SOAP) or eXtensible Markup Language (XML) messages to an application no matter the underlying transport mechanism used.

The Examiner had found that claim 14 was directed to functional descriptive material per se or software. Regarding claim 21, the Examiner observed that the computer readable storage structure term in the claim does not require the code to be stored on a physical medium but rather can encompass data compliant with a  file system.

The Appellants argued that "implementing a protocol stack" in claim 14 distinguishes the claim from software/functional descriptive material per se and that the claim is able to perform a task. Regarding claim 21, they said that it recites a physical medium and not an abstraction.

The Board dealt with claim 14 quickly. They observed that the protocol stack was described in the patent specification as a "set of protocols/protocol layers that can deliver messages to a terminal from a Web-connected server or other terminal". Based on this observation, said the Board, the protocol stack is nothing more than a logical relationship or architecture among layers which supports data manipulation functions (eg. a data structure). A claim directed to a data structure per se is non-statutory.

Claim 21 was dealt with the same way. The Board observed that the broadest reasonable construction of the "computer readable storage structure" is not limited to memory and includes an organisation or arrangement of data readable by a computer. The claim failed on two counts. It included within its scope a non-statutory data signal. It also included within its scope a data structure per se.

Abstract idea

Ex Parte Salesin et al No. 2011-002867 (BPAI May 15, 2012) involved an on-screen advertising system that employs paginated on-screen pages that adapt based on display and window size based on a given relative paginated page size.

The Examiner had found that neither of the method claims 16 nor 24 recites at least one significant step performed by, or tied to, a particular machine. The Appellants on the other hand argued that claim 16 clearly calls out a computer and a computing device's display/user display and claim 24 clearly calls out a storage medium and a display of a computing device.

The Board concluded that both claims were directed to an abstract idea.

The preamble of claim 16 recited "[a] computer implemented method". The Board found this was simply nominal use of a general purpose computer and imposed no meaningful limits on the scope of the claim apart from describing a field in which to conduct the process. (Dealertrack, Inc v Huber).

The first three steps of claim 16 recited "obtaining", "authoring" and "creating". None of these steps recite structural limitations to any apparatus. None of these steps recite any specific operations that would cause a machine to carry out the steps. These first three steps could be performed in the human mind, or by a human using a pen and paper. (Cybersource Corp. v Retail Decisions, Inc.)

The step "displaying ... on the user's display screen" didn't get the claim over the line either. The Board found this step to be no more than insignificant extra-solution activity which fails to impart eligible subject matter into the claim.

Claim 24 included an additional step of "storing document content and advertisements to a storage medium". The Board observed that "storage medium" fails to constitute a particular machine. The "storing" step could be reasonably performed by a human mind using pen and paper.

Transitory propagating signal

In Ex Parte Trantow No. 2009-014434 (BPAI May 1, 2012) we saw an invention relating to providing services to devices, and more particularly to aggregating installed devices to define a virtual device, which may then be provisioned according to the capabilities of the virtual device.

Claim 26 was directed to "[a]n article comprising a machine-accessible medi[um] having associated data for a service source to provision resources ...".

The Board observed that the claim does not recite that the "machine-accessible medi[um] is a storage medium. The Board construed "article" to encompass a transmission environment. Therefore the claims encompass a transitory propagating signal.

Photo courtesy of author leathergiftitems under Creative Commons licence.

Thursday, May 24, 2012

A forum on software patents

Participants of International Boxing Tournament in Armenia

Fellow blogger Patentology comments on a recent IP Forum held by the Australian Patent Office (IP Australia) in Sydney on the subject of 'software patents'. There are independent reports of the event by (IP Australia debates software patents), ZDNet Australia (The world needs patents: Uniloc founder), and (Do software patents stifle innovation?).

Facts and figures

Deputy Commissioner Phil Spann delivered some facts and figures. According to Spann, computing-related patent applications have increased moderately since 2003, in line with an increase in patent applications in general. Computing-related applications account for 6% of Australian patent applications. This compares with 4% in Germany, 6% in China and Japan, and 10% in the United States.

It perhaps would have been more useful for Deputy Commissioner Spann to talk about issued patents rather than patent applications. After all, the event was about 'software patents' not 'software patent applications'. It would have been interesting to see what percentage of issued Australian patents are computing-related.

I did some research a year or two ago on the New Zealand position. There were around 34,000 current patents in New Zealand across technology areas. Out of this number there were just over 1,000 granted patents that Deputy Commissioner Spann would consider to be computing-related. So that means that granted software patents make up just 3% of the total number of New Zealand patents.

A subjective view

Open source enthusiast Ben Sturmfels argued that the real winners in the patent debate are large corporations that have a significant portfolio of patents because those corporations can use their patents to threaten other companies for “getting on their turf".

He admitted that patents may be useful for certain industries, but harmed the fast-paced software industry, where "you get people inventing the same thing ... all at the same time. By saying someone has more right to an idea than someone else, just because they've filed a patent before anyone else has, that's just silly. People don't use the patent system in the way that it's intended. They don't read patents to stay up to date with state-of-the-art things. So they can't search for and avoid patents that already exist in the system. That's the real trouble."

An objective view

Australian inventor Ric Richardson spoke in favour of software patents. He disagreed with Sturmfels on several points.

He mentioned that he doesn't personally “see a lot of small guys getting squashed by big guys because in the end, if you have a patent that protects what you’re doing, they actually value that and it’s part of your whole acquisition strategy".

Without software patents, said Richardson, only the biggest players would benefit from original ideas, rather than the person who had conceived the idea in the first place. "What you say about [patents] stymieing innovation is wrong in my mind. You have great ideas in software development, and you should benefit from coming up with a great idea. To go and say everything should be free and it's only the guy that can [get to market first] is the one that should benefit from it is to encourage stealing."

The New Zealand view

Sturmfels reportedly failed to win over the audience of developers and lawyers at the event. Similarly, here in New Zealand I have seen little factual basis for the contention that New Zealand software patents are stifling innovation and preventing small companies from succeeding.

In fact, submissions a couple of years ago on the New Zealand Patents Bill emphasised that innovation is strong, even "rampant" with the law that's in place. One said the software industry is "highly competitive, innovative and prosperous". Another pointed out that New Zealand was appealing "due to the healthy and innovative software industry here".

Photo courtesy of author PanARMENIAN under Creative Commons licence.

Saturday, May 19, 2012

A woolly bait and switch

I've just returned from a hectic couple of weeks attending the INTA annual meeting in Washington DC and the AIPLA spring meeting in Austin TX. Both conferences provide a crazy mix of educational, networking and social opportunities.

I wasn't the only one who was busy. Back home our new ram has been working his magic on our small flock. We usually borrow an end-of-the-line ram from a farmer and run him with our flock during April and May. A typical 5 month gestation period means that we will get through lambing before the AIPLA annual meeting in October. I wonder how many of my intellectual property law colleagues plan their farming cycles around international conferences?

Today it was time to return the big guy to the farmer we borrowed him from. I had a plan. I would bring the sheep into the yards. The yards include a sheep race. This is a kind of narrow chute where you put the sheep when you need to do stuff to them like treating them for diseases, internal parasites or external parasites. I was going to back the trailer up to one end of the race. Run the ram and a few of his girls into the race. Lift the ram's front legs into the trailer then push the rest of him in. What could possibly go wrong?

This guy is a lot heavier than me and has a low centre of gravity. Rams have a habit of charging at you when they get riled up. They have a really hard part of their skull which is at the perfect height for connecting with your knees. It's not a pleasant experience. I can also say with some authority that it is not nice being kicked in the shins (or worse) while trying to lift a ram's front feet into the trailer.

I employed the tried and true bait-and-switch technique. I loaded what I hoped was an attractive young ewe (female sheep) into the trailer first. Well, that sure made a difference! He just about couldn't wait to get into the trailer after that. Moments later he was down the road and unloaded at the farm he came from.

Now we sit back and wait for September.

Wednesday, May 16, 2012

Israel issues guidelines for software related inventions

201009 Israel 291
The Commissioner of the Israeli Patent Office has issued guidelines for examination of software-related inventions. These types of inventions are referred to by others as computer-implemented inventions or the slightly misleading term "software patents". The attorneys at Reinhold Cohn comment that 'the pendulum has swung once again in the right direction of far more permissive patentability criteria of software-related inventions'.

What's patentable

Any invention must satisfy a few criteria in order to be eligible for patent protection. It must be new, useful, susceptible to industrial application, involve an inventive step, and be appropriate subject matter .

This last test is expressed in Israel as whether the invention falls within a technological field. The guidelines refer to a requirement that a 'concrete technological process must occur' when executing the invention. A concrete technological process means:
expression of physical features in an object on which the invention is carried out, or in the nature of the operation carried out by the product or process (see the manner in which these were discussed by the European Enlarged Board of Appeal in the matter of G0003/08, decision dated 12.5.2010).
What's not patentable

The usual suspects are excluded. The guidelines note that:
[a] discovery, a scientific theory, a mathematical formula, rules for playing games, and mental acts, as such, will be considered as abstract ideas or processes that are devoid of technical character, irrespective of whether they are performed in a "manual" manner or by a computer.
Not all business method are excluded.  The guidelines state that:
business methods per se that belong to the economic world will not be considered as inventions in a technological field.
A technological character may nevertheless be crystallised by combining an abstract idea or process with additional technological means.

How will this apply to software-related inventions?

The guidelines provide some rules that may assist in applying the guidelines to the field of software-implemented inventions, noted as a field in which questions are often raised as to how to identify concrete technological character.

Beyond regular operation

One rule asseses whether carrying out the claimed invention has expression of modification in the physical features beyond the regular operation of an integrated computer system. If yes, then this indicates that the invention falls within a technological field.

Operating in a new manner

An invention can also fall within a technological field if carrying out the claimed invention causes the computer to operate in a new manner. A new manner includes improving the computer's performance. Performance includes speed, reliability, improved utilisation of data storage capacity.

Inter-operability of components

A further indicator of a technological field is if inter-operability is created between components of the computer system in a manner that did not exist beforehand.

Just a regular technical effect

In the situations set out above it is assumed that a concrete technological process will occur when the invention is executed. However, not all computer implementations will result in a concrete technological process.

For example, if the invention is implemented by a computer, and the operation of the computer does not add anything beyond the "regular" technical effect resulting from executing a computer program on a computer, then there would be no concrete technological character.

Automation of a process

Some inventions involve computer implementation of a process that can also be carried out without the assistance of a computer. These include automation of manual processes, processes for optimisation and processes for diagnostics. If such implementations exhibit a contribution beyond the obvious and clear efficiency in computerising a process then there may be reasonable basis for the existence of concrete technological character.

Putting this another way, in some cases the implementation of the invention using a computer is substantially different from the manual performance. For example, it might not be practical to perform the process efficiently using "manual" means. In other cases the implementation might have no significance apart from the context of the computerised process. These all point to the existence of concrete technological character.

Photo courtesy of author YoavShapira under Creative Commons licence.

Tuesday, May 1, 2012

Third strike notice withdrawn

We have seen details emerge of a third enforcement notice issued to a customer under New Zealand's 'three strikes' law. Last year New Zealand lawmakers amended the Copyright Act to introduce a three notice regime aimed at deterring file sharing that infringes copyright.

The mystery notice

The National Business Review (NBR) reports that another Internet Service Provider (ISP) has issued an enforcement notice to a customer. What is interesting about this new case is that the ISP 'supported the customer in understanding the process and making a valid challenge under the regime'. Based on this customer's circumstances, the rights holder rescinded the notice.

We don't know who the rights holder is. We don't know who the customer is. And we don't know what the alleged offence is. I wonder why the rights holder decided to extend an olive branch after sending three notices?

The story so far

It is fair to say that the legislation has not been overused. A couple of weeks ago we saw the first two final enforcement notices sent out. In both cases the Recording Industry Association of New Zealand (RIANZ) instructed ISPs TelstraClear and Vodafone respectively to send the notices. Both notices contained allegations of illegal download of music. See my earlier blog post.

TorrentFreak comments that it took 'a full two months for RIANZ ... to deliver their first batch of just 75 warnings. All of them related to international artists and local artists were completely absent.' The New Zealand branch of the Motion Picture Association (NZFact) is understood to have sent no notices.

The MED review

The Ministry of Economic Development (MED) has issued a Fee Review discussion document. The MED is particularly seeking submissions from ISPs and rights holders. The closing date for submissions was yesterday, 30 April 2012. As I said in an earlier blog post, I think the review will provide interesting information about how the scheme is working generally.

There are not many objective facts but TorrentFreak has some theories regarding the low uptake of the scheme. One theory suggests that the small size of the market in New Zealand means it is not worthwhile for NZFact to send notices. A related theory is that the cost of enforcement, when you are talking about thousands of notices, is too high.

Another theory suggests that RIANZ have been monitoring file-sharing networks in order to work out who is doing the most infringing. RIANZ is then selectively targeting those users first.

The cost so far

A Techday article notes that 'despite claims prior to the law’s passing that it would take thousands of infringement notices to tackle all the infringers in the country, most ISPs have reported only a few hundred notices at most, suggesting rights holders are only targeting the worst offenders'.

At a recent TelCon12 telecommunications conference in Auckland, representatives from TelstraClear, Vodafone and CallPlus all indicated that preparing for the new regime was a very expensive process. TelstraClear's Oonagh McEldowney observed that it was not just a case of receiving information and sending a notice. He commented that his company is "nowhere near recovering our setup costs."

It was also observed that many rights holder groups are yet to request any notices, with nearly all requests so far coming from RIANZ.

This review is certainly going to be interesting.

Photo courtesy of author wollombi under Creative Commons licence.
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