Data Categorisation Invention Categorised as Unpatentable
In Thomson Reuters Enterprise Centre GmbH [2020] NZIPOPAT 7, the IPONZ Patent Hearing Office had its first opportunity, since the passing of New Zealand’s Patents Act 2013, to consider s 11, which excludes from patentability “computer programs as such”.
The case related to the Examiner’s outstanding objections under s 11 (computer programs as such) and s 14(a) (manner of manufacture).
The Assistant Commissioner held that the claimed invention amounted to a “computer program as such” since it related to a known data-categorisation method implemented on a known computer device (albeit a different type of device than had previously been used for the purpose), with no improvement or modification to the computer. He also held that the claimed invention was not a manner of manufacture as it did not, in a real-world sense, meet the NRDC requirement of an artificially created state of affairs having economically significant practical utility.
SECTION 11 OF THE PATENTS ACT 2013
Section 11 provides:
Computer programs
(1) A computer program is not an invention and not a manner of manufacture for the purposes of this Act.
(2) Subsection (1) prevents anything from being an invention or a manner of manufacture for the purposes of this Act only to the extent that a claim in a patent or an application relates to a computer program as such.
(3) A claim in a patent or an application relates to a computer program as such if the actual contribution made by the alleged invention lies solely in it being a computer program.
(4) The Commissioner or the court (as the case may be) must, in identifying the actual contribution made by the alleged invention, consider the following:
(a) the substance of the claim (rather than its form and the contribution alleged by the applicant) and the actual contribution it makes:
(b) what problem or other issue is to be solved or addressed:
(c) how the relevant product or process solves or addresses the problem or other issue:
(d) the advantages or benefits of solving or addressing the problem or other issue in that manner:
(e) any other matters the Commissioner or the court thinks relevant.
(5) To avoid doubt, a patent must not be granted for anything that is not an invention and not a manner of manufacture under this section.
According to the IPONZ Practice Guidelines, s 11(3) is modelled on steps (i)-(iii) of the test in Aerotel(Macrossan), in the following manner:
(i) Properly construe claim
(ii) Identify the actual contribution of the claim
[At this point the s 11(4) factors are asked]
(iii) Ask whether the actual contribution lies solely in it [being a computer program]
[At this point a modified version of the five AT&T “signposts” is used, “scrubbed clean” of any technical character content.]
The Guidelines state that Aerotel(Macrossan)’s step (iv) – checking whether the actual or alleged contribution is actually technical in nature – is not a part of New Zealand law under s 11(3) (hence the “scrubbing” of the AT&T signposts).
Section 11 includes 2 examples, which arguably demarcate the “extremes” of s 11 without saying much about the middle-ground. The first relates to method of operating a conventional washing machine, the washing machine itself being “not materially altered in any way”. The method is effected via a computer chip inserted into the washing machine. This is stated as being patentable, as the actual contribution lies in the “way the washing machine works”, not the computer program.
The second example relates to a computerized method of completing legal documents. A computer program (run on standard hardware) asks a user questions, then consolidates their answers into documents of the appropriate format. The actual contribution lies solely in the computer program, so the invention is not patentable. This example arguably aligns with prominent CII cases in other jurisdictions, such as Australia’s RPL Central where computerization of a generic data-gathering process was found to amount to using the computers as a “mere tool” for convenience.
THE APPLICATION
To paraphrase, the claims related to displaying at the perimeter of a touch-sensitive screen a series of categories; displaying as a “tile” on the screen a data set; detecting, via a user’s swipes on the screen, which category the user wishes to allocate each data item to; and visually updating the data item to reflect the category it had been allocated to.
Claim 1 recites:
A computer-implemented method for classifying data comprising:
receiving at a server of a system for classifying data a first signal associated with a set of categories, the set of categories being user defined with each category being assigned a respective screen location for a visual representation of the category along a perimeter of a touch-sensitive graphical user interface;
receiving at the server a second signal associated with a first set of one or more data items to be analyzed;
presenting the set of categories on the touch-sensitive graphical user interface at the respective screen locations along the perimeter of the touch-sensitive graphical user interface;
presenting each of the one or more data items of the first set to be analyzed on a tile overlay on the touch-sensitive graphical user interface;
receiving a first swipe identification signal, the first swipe identification signal identifying a first category from the set of categories presented at the respective screen locations along the perimeter of the touch-sensitive graphical user interface to apply to a first data item from the set of one or more data items to be analyzed;
receiving a second swipe identification signal, the second swipe identification signal identifying a second category from the set of categories presented at the respective screen locations along the perimeter of the touch-sensitive graphical user interface to apply to a second data item from the set of one or more data items to be analyzed; and
based upon the first and second swipe identification signals:
generating a first record and a second record, the first record associating the first data item with the first category and the second record associating the second data item with the second category;
storing the first and second records in a memory; and
generating a respective modified visual representation of each of the first and second data items,
wherein the respective modified visual representation provides a visual indication of the category associated to the data item.
Independent claims 7 (to non-transitory readable media) and 14 (to a system for classifying data) have features broadly corresponding to that of claim 1..
THE DECISION
Section 11 (computer program as such)
There being no definitions in the Act for “computer program” or related terms, at [18] – [22] the Assistant Commissioner proposed a number of definitions.
- In contemporary technology a computer is a digital electronic computer and a computer program is information provided in a form either directly or indirectly accessible to a digital computer and that can be used by a computer to process digital data provided to the computer, change configuration settings within the computer, or make computations to generate new data. [19]
- A computer program is generally not altered when the program is run on the computer, so that the program can be reused again and again. This is a key feature that distinguishes program code from digital data. [19]
- Any program with a direct or indirect influence on the operations performed by the processor, irrespective of the “level” at which a program sits in terms of directness of interaction with the processor of the computer, the language in which the program is “written”, or the physical form in which the program is stored or recorded or made available to the computer must be taken to be a “computer program”. [20]
- I think it is reasonable to read “a computer program” as a collective noun which encompasses a collection of more than one program, designed to work together and each of which is needed for the computer to perform a process or integrated set of processes. [21]
- The word “computer” in the expression “computer program” means any computer of any scale or type, whether it has a single processor programmed via setting of physical switches or multiple networked processors, of any architecture. [22]
The Assistant Commissioner noted (at [26]) that “an internet networked computer system for categorising data items [but without] touchscreen user interfaces is already well known. So the applicant’s invention is not about the basic system and method for “crowdsourced” categorising of data, but directed only to the very specific use of touchscreen interfaces to perform the categorisation actions.” That is to say, the method / protocol of categorizing the data is old; the invention just implements it using touch-screen technology instead of other forms of computer technology that may have previously been used.
The Assistant Commissioner went on (at [32] – [35]) to reject the applicant’s contention that the invention improves or affects the working of the user interface. He concluded that the invention uses known computer devices which are not modified or improved by having the claimed method executed on them. So, the invention boils down to taking a known method for data-categorisation and, instead of implementing it in one known apparatus, implementing it instead in another known apparatus. The invention was therefore found to relate to the computer program as such and was not patentable.
Curiously, at [36] the Assistant Commissioner alleged that “what happens in the computer is entirely dependent on the data being processed” (alluding to one of the AT&T signposts). This would seem questionable, as the steps of the categorization protocol would presumably be the same regardless of the type or content of data being dealt with. At [71] the Assistant Commissioner expressed apparently the opposite view, stating that “the performance of the method does not change regardless of the data and categories presented to the user.” This was key to his finding on manner of manufacture (see below), since it led him to conclude that “the method is essentially “divorced” from the data so performing the method cannot result in an artificially created state of affairs of practical utility in the sense explained in NRDC”. But if this is the case, then the relevant AT&T signpost should have been answered in the affirmative (though this would have been unlikely to sway the ultimate outcome on the s 11 question).
The Assistant Commissioner took the opportunity to comment on UK and EPO jurisprudence, as concerns inventions involving computer programs; his main point (at [74] being that s 11 of the New Zealand Act, while being modelled on the EPO and UK provisions and case law, does not incorporate a “technical effect” or “technical character” test. At [78] he commented that “Perhaps the closest the decision maker in New Zealand might come to utilizing a notion of technical effect [in a s 11 context] would be to consider that it might be a relevant consideration under s 11(4)(e).” The Assistant Commissioner also pointed to the Supplementary Order Paper (SOP) No 237 of 14 May 2013 that led to s 11 being worded as it is.
Section 14 (manner of manufacture)
Having dealt with s 11, the Assistant Commissioner then went on, at [48] – [72], to apply what some would consider a pleasingly “pure” NRDC-based manner of manufacture analysis to claims 1 – 6 of the application, asking “whether carrying out the method of claims 1 to 6 will result in an artificially created state of affairs that has economically significant practical utility” [58]; and finding that the invention does not create an artificial state of affairs “in the “real” or material world. The result is simply a record and display of information about information.” [71] He rejected the applicant’s arguments based on “technical result”, stating that “this submission does not address the [manner of manufacture] question”.
CONCLUSION
The decision reinforces that inventions which are “computer programs as such” will be given no quarter in New Zealand. The decision is also clear that the “technical character” criterion is not a part of New Zealand law. The authors find it debatable whether rejecting the “technical character” test is necessarily the correct or advisable approach; commentary will follow in Part 2.
Author: Anna Klepacki
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