Wellington
By guest blogger, Doug Calhoun
Throughout the debate on the patentingof software, a battle has been quietly percolating under the radar over a NZ patent application(NZ525001) that has touched upon just about every issue in the software patent debate. And theoutcome has been a complete success for ACC and MoH. A patent application originally accepted byIPONZ has been comprehensively refused by a hearing officer after an opposition process that lastedalmost six and a half years.
The link to the decision is
The original owner of the patent application was an American firm,
The invention of NZ 525001 is “a system for communicating health care data from a sender to areceiver”. After it had been examined and accepted by IPONZ in 2005, no less than three majorplayers in healthcare (ACC, MoH and Southern Cross) and Telecom opposed the further step of grantinga patent. Since then there have been two interim hearings and an appeal to the High Court beforethey finally got around to the substantive hearing and decision. Along the way Healthtrio droppedout, but its founder, Dr Hasan, continued to pursue the patent; on the other side Telecom andSouthern Cross ceased active participation at an early stage. So in the end it was Dr Hasan againstACC and the Ministry of health.
And why did ACC and MoH oppose? The answer is found in paragraphs [266] to [268] of thedecision. ACC had been using its “EMG system” since June 2000. In paragraph [268] the decisionrefers to evidence that “the EMG system was widely used, with GPs, physiotherapists, ambulanceservices and hospitals all registered to communicate data with the EMG.” They were worried thatthey might be sued for using a system they had developed before Healthtrio had filed its originalpatent application – and they were cross that Healthtrio had tried to patent something that theyhad already done.
They were more than vindicated. The only difference the hearing officer saw between the EMGsystem and the Healthtrio one was in the latter’s normalisation of information. But:
“[271] Normalisation is well known from the common general knowledge and it wouldbe a desired outcome that all information appears in a common form in a combined database that is tocontain the accumulated data from existing independent databases. The invention claimed is obviouswhen the prior art is considered alongside the common general knowledge. It would be unfair on theskilled worker to give patent rights which would prevent that skilled worker from its previouslyenjoyed right to put information into a database and for the information in that databases to be putinto a standardised form, something the skilled addressee would have been able to do without anyexercise of inventiveness from their common general knowledge.”
The main ground upon which the hearing officer made his decision was that the “specificationdid not sufficiently and fairly describe the invention and the method by which it is to beperformed”. (One theory of the basis for patents is the social contract theory – in return forgranting a time limited exclusive exploitation right, the state receives a public disclosure of theinvention. But if, as has happened here, the disclosure is not sufficient and fair, the patentapplicant has not fulfilled its side of the bargain. So the state declines to grant a patent.)
Paragraphs [103] to [208] explain why. The hearing officer placed a great deal more weight onthe evidence of the opponents’ expert witness, Dr David Parry, than on the evidence of the expertwitnesses for Healthtrio.
“[073] In conclusion, I agree with the opponents’ analyses of the experts, above,and I consider that little if any weight can be given to the evidence of Dr Desai, Mr Prib and MrCooper. The evidence of Dr Parry and Mr Bowden is very relevant, being from experts in the field,and especially experts in the field in New Zealand, New Zealand being ahead of other countries inthis technical field, and I consider much weight can be placed on theirevidence.”
Dr Parry gave evidence (paragraph [142]) that the term “normalise” as used in thespecification “could not … be understood by any reasonable person working in the informaticsfield based on their experience or knowledge … or on any information in the specificationitself.” He expressed similar concerns (in Paragraph [146]) about the meaning of the word“meaning”.
The hearing officer agreed.
The hearing officer noted in paragraphs [160] to [162] that the corresponding Europeanapplication had also been refused for lack of clarity.
For trainspotters the decision can be
To complete the dissection of the Healthtrio application, the hearing officer also found that theinvention claimed in claims 26 to 29 had been prior published in two separate earlier US patents;and that the invention claimed was “not an invention”.
The “not an invention” finding was an extension of the obviousness finding, as opposed to afinding that the system was not a “manner of manufacture” - which is at the heart of the debateon the patent exclusion of computer programs. The hearing officer’s conclusion was:
“[275] As I see it, the invention claimed in claims 1 to 25 is a mere collocationof known steps and/or components, in particular the use of a known normalisation step and a knowntransliteration step in the transmission of data in a known network environment, and particularly inthe creation of a common database containing all information contained in a number of existingdatabases. Each step or component performs its known function without any alteration or synergy. The claims represent mere collocations of known integers and therefore lack inventiveness and arethus unpatentable.[277] It would be wrong to prevent others in the field from extracting data from severaldatabases to create a single database containing all the information in one place using standardtechniques within the common general knowledge of the skilled addressee, as I find to be the case inthe claims under consideration.
[278] If one looks beyond the normal extraction of data from a known database into anotherdatabase, at the ability for a system to automatically understand data in an unknown database andextract that information into another database, then there is mere speculation and a casting of theclaims widely to catch future developments that fall within the vague claims. Applicants are onlyentitled to claim what they have themselves invented. In the present case there is no explanationas to how the system can automatically understand the meaning of data in unknown databases andextract that data into a set of fields in its own database.”
The lesson taught by this decision is that if someone is seeking a software related patent in NewZealand, and they have not done anything more than a rehash of what has gone before, there are toolsavailable under the existing law to put a stop to them.
The process has taken six and a half years. One reason is that the opponents tried to shortcutthe process to get a decision only on the issue that ultimately was the decider. But in the endboth sides collected and filed extensive detailed evidence on all issues – and that takes time. And the hearing officer did a remarkable job of sifting through it all and producing a detailed butcoherent 75 page decision within three months, including Christmas.
And we can all do a metaphorical haka over his finding that New Zealand is ahead of others inthis technical field.
And speculate as to why the Australian equivalent patent (AU 2002211889) was granted with claimsidentical to those refused here; and the US equivalent (US 7,664,660), while containing many morequalifications in its main claim, still uses the terms “normalise” and “meaning” that werefound to be meaningless here.
~ Doug Calhoun
IP Mentor