Business method patents – a survey

The June 2012 edition of Intellectual Property Forum magazine contains an interesting article by Ben McEniery, Barrister and Senior Lecturer of the Faculty of Law Queensland University of Technology, entitled “An Empirical Study of Business Method Patent Applications Filed in Australia 2000-2009″ (not available online, extract here).

On the background to business method patents:

The push to patent business methods began in earnest worldwide after the United States Court of Appeals for the Federal Circuit handed down its decision in State Street Bank & Trust Co. v Signature Financial Group, Inc. in 1998. In thate case, the revered Judge Giles Rich categorically rejected the notion that business methods are a class of subject matter that is excluded from patent eligibility. Rich J’s view in this regard has since been adopted as good law in Australia.

On the motivations for the study:

Despite the controversy, and in some quarters, the outright opposition to business method patents, we know very little about business method patenting practices…

One of the principle motivations behind this study was to identify the number of patent applications for business methods filed during the sample period that satisfy the physicality requirement introduced into Australian law in 2006 in [Grant v Commissioner of Patents] …

While a New Zealand court has not yet ruled whether the Grant requirement for a “physical effect” applies in New Zealand, IPONZ draft guidelines suggest that it should (another paper by Ben on the Grant decision is here).

An interesting part of the study is whether the Australian Patent Office has been enforcing the requirement for a physical effect:

Perhaps the most interesting observation to be made from the data is the number of applications that do not involve a physical effect. Of the 200 business method patent applications considered, 75 contain non-physical claims – that is, either solely non-physical claims (59) or both physical and non-physical claims (16). In other words, more than one-third of the applications considered contain claims that do not conform to the physicality requirements established in Grant.

The legal requirement for a physical effect is clear, yet one third of the business method patents were granted by the Patent Office despite failing to meet this simple requirement. The author states (rather diplomatically):

The applications that contain non-physical claims should all be rejected, either in whole or part, by the Patent Office. The survey results, however, suggest this is not happening.

But even more interesting is this:

The remaining 125 applications contain physical claims only as a consequence of having been implemented in computer software. That is, the only physical effect of these methods is a physical transformation taking place as a result of a change in state or information in a part of a machine.

So, of the 200 business method patents studied, at least 184 had either no physical effect, or only had the dubious “physical effect” of changing 1′s and 0′s in a computer. No doubt, the patent applications omitting any claimed physical affect could easily be amended to assert informational changes in a computer as the necessary physical effect (i.e. cliché of the “… but on a computer!” patent).

Business method patents are a close cousin of software patents, and in some cases the underlying “invention” could be dressed as one or the other, making the study relevant to the software patent debate:

  • If changing the state of information in a machine is a legally sufficient “physical effect” to support a business method patent, or is routinely considered so by the Patent Office, then the requirement may as well be done away with;
  • The requirement is routinely ignored anyway;
  • It highlights the tenuous theoretical basis on which many business method patent applications rest (asserting that informational changes are “physical”);
  • It highlights the need for clear legal guidelines (preferably legislative, otherwise judicial/administrative); and
  • It demonstrates the difficulties for patent examiners in processing business method patents making highly abstract, metaphysical claims, resulting in questionable patents being granted.

Tech Law update

I have been blogging less because I am working on a technology & law related project (more information soon). In the meantime:

Online Defamation

Kiwiblog noted an interesting Canadian defamation case (Baglow v Smith) involving defamation on political blog sites:

On 30 August 2011 the Ontario Superior Court of Justice handed down judgment in the case of Baglow v. Smith, 2011 ONSC 5131. The decision suggests that an allegedly defamatory statement made in a debate on a blog or internet forum may not be found to be defamatory if the plaintiff previously engaged in the debate but did not respond to the statement despite having the opportunity to do so.

Canadian law firm Heenan Blaikie has a summary of the case here:

At the risk of over-simplifying the matter, the court’s decision can be summarized as this: there is something meaningfully different about online statements, particularly those which are made on political blogs and discussion forums, which militates that they be treated differently for purposes of defamation law. Put somewhat differently (and, again, with the qualification that this over-simplifies matters): impugning someone’s name on the broadcast evening news is different from impugning their name on a blog.

New Zealand courts give weight to Canadian judgments, and it will be interesting to see whether this case is raised in a New Zealand defamation proceeding in due course.

Amazon’s “one click” patent reaffirmed in NZ

Amazon’s infamous “one click” patent has been reaffirmed in New Zealand by a decision of the Commissioner of Patents, Amazon.Com, Inc v Patrick Ryan Costigan [2011] NZIPOPAT 12 (21 July 2011). The opposition to the patent does seem to have been somewhat quixotic – the opponent was not represented at the hearing, whereas Amazon had a team headed by a QC appear to defend its patent, as well as evidence from US and Australian patent experts. The Commissioner also noted that the patent had been upheld in Australia.

Google cleared in Australian ad-word case

The Australian Competition and Consumer Commission – the equivalent of NZ’s Commerce Commission (but rather tougher, it has to be said) – has lost a case it brought against Google alleging that Google engaged in misleading and deceptive conduct by mixing ads into its search results. The Court also found Google had not breached trade practices law by using (or allowing the use of) competitors’ names and trademarks in sponsored links. The full 73 page judgment is here.

UK Govt asks for Search Engine De-optimisation

Computerworld reports:

Google and other search engines, including Microsoft Bing and Yahoo, will be asked by the UK government to push copyright-infringing websites down their search results under new plans.

Which sounds like it could open a can of worms… The article also notes:

… it is understood that there could be forthcoming legislation, within the Communications Bill, if an industry-run solution is not found.

Which will certainly be a can of worms.

Watch the UK Supreme Court live

In what is understood to be a first, the UK Supreme Court (which in 2009 replaced the House of Lords as the UK’s highest court) now transmits a live coverage of hearings. This is a good step forward for open justice, because while most court hearings are open to the public, they are usually rather inaccessible. The Supreme Court coverage is available here streamed via Sky UK.

Technology law update 6 October 2010

Virtualised software licensing

Licensing virtualised software isn’t getting any easier:

Big picture: Software licensing for virtual desktops is incredibly complex, confusing and, in some cases, prohibitively expensive. “It’s like the tax code,” says Dave Buchholz, principal engineer at Intel’s IT unit

Like the tax code – ouch. This is not new, yet from a contractual point of view, licensing virtual software is relatively straight-forward. The complexity is not an inherent licensing problem, but simply a commercial consequence – partly due to the well-worn idea that complexity is good for business (think mobile phone plans), and partly due to vendors trying to have their cake and eat it too.

Besides piracy, studies show that even users who actively try to be fully compliant often cannot understand the licensing rules (and as the article says, even vendors can struggle to understand their own licensing). The reality is that in most cases, if there is money on the table that a licensing tweak could recover, those tweaks would have already been made. But while the practice of overly-complex licensing has perhaps lasted longer than expected, disruptive technologies such as usage-based cloud computing, and open source software and the increasing use of virtualisation itself, mean the trend will be toward simplified licensing and subscription models.

Name suppression laws to be tightened

The Government has announced changes to name suppression laws, following a number of high profile incidents, a prosecution, and a Law Commission report into the matter. Among the announced changes:

Introducing a new offence to capture New Zealand-based Internet service providers or content hosts who do not remove locally hosted suppressed information which they know is in breach of a suppression order, and who fail to block access or remove it as soon as reasonably practicable. [emphasis added]

This is an improvement on the Law Commission’s recommendation that ISPs and hosts “carrying” suppressed information should “block access” to it, which would have caused practical problems for ISPs (see my comments here). Having a requirement simply to remove locally hosted content is a simpler and more realistic approach. But it still remains an iffy matter – IT lawyer Rick Shera raises some pertinent questions here.

Coincidentally, on the same day as the Government’s announcement, a name suppression order forced a number of bloggers to remove posts that had previously the identity of certain individuals. By which time the information was already available in caches, syndicated posts, Twitter, etc – just another reminder of the difficulty of name suppression in the present day.

Who’s suing who(m)?

Another day, another US patent infringement claim. There are so many flying around, its hard to keep up. Fortunately the Guardian gives us this diagram. Expect to see a few more arrows added in the near future.

If you can’t beat ‘em?

Minorly ironical: Ars Technica reports on antipiracy lawyers apparently pirating the legal forms of other antipiracy lawyers.

SCOTUS kicks for touch on business method patents

The US Supreme Court has released its long-awaited Bilski decision involving business method patents. Many commentators had hoped that the case would provide a definitive statement on the patentability of business methods, and possibly other subject matter such as software patents, compression techniques and biotechnology. Instead, it seems the court has kicked for touch – or “taken a knee” in the American equivalent, I am informed.

The court ruled that the “machine or transformation” test was not the only criteria for determining patentability, but that there should not be “broad patentability” of business methods. Lower courts could continue developing limiting criteria. It upheld the lower court’s decision to reject Mr Bilski’s attempt to patent a method of financial hedging. But it left many questions, and some confusion, by not giving clear guidance on what’s patentable and what’s not.

Some comments:

Forbes.com:

The practical effect of the Bilski ruling will be limited, lawyers said, but it will definitely mean more lucrative patent litigation.

New York Times:

There were high hopes that the Supreme Court would clear things up in the mushy, litigation-filled realm of patents on methods of doing business.  [Bilski] was anything but a landmark decision. Still, there was a clear message for patent trolls, patent brokers and licensing companies, patent lawyers and lobbyists: Play on!

“The court is certainly not shutting the door on business method patents, as some thought it might,” said Josh Lerner, a patent expert at the Harvard Business School. “This preserves a fair amount of ambiguity.”

Patently-O:

Although not rejected by the majority opinion, it is clear that the broad “useful, concrete, and tangible result” test is dead. That test is conclusively rejected by what I term the Anti-State-Street Majority — a majority created by the combining the two concurring opinions in Bilski and their five-justice majority. The result is that the scope of patentable subject matter is certainly narrowed from its 1998 high-water-mark.

Glyn Moody:

So, the long-awaited US Supreme Court ruling on Bilski vs. Kappos has appeared – and it’s a mess. Where many hoped fervently for some clarity to be brought to the ill-defined rules for patenting business methods and software in the US, the court instead was timid in the extreme. It confirmed the lower court’s decision that the original Bilski business method was not patentable, but did little to limit business patents in general.

AP:

Scott Bain, lawyer for The Software & Information Industry Association, said the decision “preserves a delicate but important balance.” “It keeps the door closed to patenting mere abstract ideas, which many ‘business method’ patent applications have been,” he said. “But just as importantly, it affirms the continued viability of patenting useful software applications, which will allow software companies to continue in their role as a driver of economic growth.”

Nature:

For those who were looking to the Supreme Court to provide clarity on a contentious issue, however, the court’s limited ruling was a bitter disappointment. “The decision is incredibly unhelpful,” says Steven Bauer, head of litigation at the law firm Proskauer Rose in Boston, Massachusetts. “Nothing in their decision can be used to decide what’s patentable or not.”

The decision had potential ramifications for New Zealand companies who have (or hope to get) business method patents. If such patents were unavailable in the US, the value of having them in NZ and other countries could be somewhat undermined. Unfortunately, though, the recent New Zealand patent law review also didn’t address business method patents in much detail, and it will probably be many years, if ever, before the NZ Appeal Court or Supreme Court hears a similar case. The net result for all is the status quo, and business method patents will remain murky for some time.

It also will not affect the ongoing software patent debate in this country, which is also somewhat up in the air.

Tech Law news 6 April 2010

Don’t forget the domain names

Securing key domain names likely to be associated with a venture is business-101. Unfortunately for Tourism Australia, they launched their new “Nothing like Australia” campaign without registering www.nothinglikeaustralia.net, which has now been setup as a spoof site. They are now investigating legal action against the site for alleged misuse of a trade mark.

This raises the question of whether parody is a defense to trade mark infringement (for a local situation, see here). In New Zealand, there is no specific parody defence in the Trade Marks Act 2002, although a trade mark must generally be used “in the course of trade” for infringement to occur. A 2007 case, Solid Energy New Zealand Ltd v Mountier raised the question of whether use of a trade mark was use “in trade”. It found that the parody was not “in trade” for the purposes of the Fair Trading Act 1986, but did not reach a conclusion on the trade mark aspect. It also found that the trade mark owner had an arguable case for “exclusive use” of the trade mark, which (assuming a broad application what is “use”) would seem to prevent a parody defence. Whether or not the Bill of Rights Act 1990 (section 14) would override that is yet to be seen.

Cost of world-wide advertising campaign: AUD$150 million. Cost of not registering obvious domain names: $19.95. Parody site: priceless.

Gene patent ruled invalid

For the first time in the US, a judge has ruled that a human gene patent was invalid. This casts doubt on the validity in general of gene patenting in the US, the key market for biotechnology.

New Zealand’s in-progress Patents Bill (reported back from select committee last week) does not expressly exclude gene patents. It does exclude patents contrary to morality, which cover some biotechnology applications. However it does add a requirement for “usefulness”, which will prevent gene-related patents from being granted when no specific use has been discovered or disclosed (as has happened previously). But the value of a gene patent in a particular market is of questionable value, if it cannot be patented in key worldwide markets. The US case (which is sure to be appealed) is therefore of major importance to the biotechnology industry worldwide.

Online health records coming to New Zealand

2014 has been set as the target date for an online national health records system in New Zealand. Meanwhile, ISO (the International Standards Organisation) recently released new standards on electronic health records. From the press release:

Together, the two documents provide a powerful comprehensive solution to address e-health data integrity, including ethical and legal concerns, privacy protection, regulations concerning access and disclosing of records among other needs specific to the industry.

It will be interesting to see if the New Zealand programme achieves ISO compliance from the outset. The Privacy Act 1993 requires that reasonable safeguards be used to protect personal information, and in the case of service providers, that “everything reasonably within the power of the agency is done to prevent unauthorised use or unauthorised disclosure of the information”. It would be difficult to argue that failure to acheive “reasonable compliance” with an ISO standard (representing best, or at least good, practice) meets that standard.

Peer-to-patent launched in Australia

An Australian version of the Peer-to-Patent initiative was recently launched in conjunction with IP Australia (official site). From the official announcement:

Peer-to-Patent Australia opens part of the patent examination process and invites the public to review patent applications volunteered for the trial… The process is designed to tap into the expertise of the public to help assess whether a particular application is eligible for a patent.

The system is currently being run as a 12 month pilot programme, limited to business method patent applications.

The original Peer-to-Patent initiative completed a 2 year US pilot in June 2009. While the US Patent Office has yet to report on its results, the first year report from the New York Law School was positive (some criticisms are listed at Wikipedia). The US pilot was not limited to business method patents, although interestingly the patent application which received the most user interaction was such a patent – “Method, apparatus and computer program product for providing status of a process” (hmm, maybe they could also give it a unique name like ps or top?).

It is a good idea for the Australian pilot to be limited to business method patents, which covers most manifestations of software patents. It appears that IP Australia is giving good support to it. Let’s hope that IPONZ watches this closely – IPONZ (like the MED) has good IT systems and has been quite progressive with IT. If the pilot works, it will be a major improvement to a currently in-need-of-improvement system.

Of course, as with any community-driven system, its quality will only be as good as the community supports it. For open source, could it be a case of “many eyes make bad software patent applications unsuccessful”?