Welcome to ChIP Chat

In this issue of ChIP Chat we report on legislative changes to propel us into the 21st century.

The Copyright (New Technologies) Amendments Act 2008 makes more than 90 amendments to the Copyright Act 2004. The new Patents Bill significantly overhauls our existing 1953 legislation but maintains the patentability of ICT related inventions.

Across the ditch we see a streamlined policy to obtain a transfer of a .com.au domain name. In the USA, we see a dispute brewing over online Scrabble and a close look by the US Courts of the patentability of non computer implemented business methods.

I continue our series on "patenting your invention in eight easy steps" looking at preparing the patent specification.

We have updated our template for ChIP Chat - we hope you like our new look. As always, we welcome your feedback and comments.

Matt Adams

Copyright (New Technologies) Amendments Act 2008

Parliament passed the Copyright (New Technologies) Amendment Act into law earlier this year.

The Act (with one exception) will come into force when the government approves the regulations required under the Act. The Ministry of Economic Development estimates that the government will approve the regulations by October 2008.

The Act is a significant piece of legislation—it makes more than 90 amendments to the Copyright Act 1994. The fundamental purpose of the amendments is to bring the Copyright Act 1994 into the 21st century.

The key changes to the Copyright Act 1994 when the Amendment Act comes into force will be as follows.

• Updated/new definitions to ensure the Act can cope with digital technology
• Allowing people to copy sound recordings for personal use, changing the sound recording from one format to another for example, converting a track from a CD to an MP3.
• Special provisions protecting technological protection measures (TPMs) to restrict how people can deal with TPMs.
• Specific liability for internet service provides (ISPs)

One amendment to the Copyright Act 1994 has already come into force. That amendment is the prohibition on parallel importing films in the first 9 months after the copyright owner makes the film available to the public.

Some of the amendments are controversial. For example, the amendments require ISPs to perform a quasi-judicial role in disputes between copyright owners and parties using that copyright material on the internet.

In other areas amendments are not controversial. Rather, the changes reflect the reality of the New Zealand Market. For example, the amended Act will make it lawful for people to change the format of sound recordings. That means you can convert a track from your CD to play on an MP3 player. This is something that has been happening for many years already and does not appear to concern the music industry.

Ultimately we will have to wait and see how the Courts interpret the changes. Only then will we see whether the amendments provide the right balance between protecting copyright while still allowing access to, and the use of, copyright works.
 

Simon Fogarty

New domain names transfer regime in Australia

Have you ever tried to have a .com.au domain name transferred from an existing registrant to you, only to be frustrated by complicated auDA policies? Good news! Recent changes in auDA policies have now made it easier for New Zealander to obtain transfers of .com.au domain names.

To obtain a transfer of a .com.au domain name, the new registrant must meet the eligibility and transfer criteria.

Eligibility
auDA policy provides strict eligibility criteria for .com.au domain names. In summary, an Australian business entity or any entity that has an official trade presence in Australia can hold a .com.au domain name.

However, in many instances, New Zealanders do not have an Australian business entity and have not yet begun trading in Australia (although it may be part of the long-term strategy). Fortunately, if you are an applicant or owner of an Australian trade mark registration, you could hold a .com.au domain name if it is an exact match, abbreviation or acronym of your trade mark.

So if you have future plans to trade in Australia and would like to operate a .com.au website, make sure you have protected your brand as a trade mark in Australia. This will also provide the additional benefits that come from owning a trade mark registration

Transfer criteria
Previously, the auDA transfer policy had strict criteria dictating when a .com.au domain name licence could be transferred between parties. Significantly, the criteria prevented the transfer of a .com.au domain name license where it was “purchased” from the current registrant. The reason for this policy was to prevent cyber-squatters who purchased domain name solely for the purposes of resale.

The new auDA transfer policy has done away with the strict criteria. The transfer of a .com.au domain name can now be made for any reason. This means you can “purchase” a .com.au domain name from the current registrant and have it transferred to you (so long as you are eligible to hold a .com.au domain name).

The prohibition on registering domain names for the sole purpose of resale however, still remains.

Charmian Oh
 

Patentability of business methods

Business method patents have been applied for and obtained since the early 1900s. The awareness of this type of protection is such that the Patents Offices in New Zealand, the United States and elsewhere have seen a significant increase in the number of business method patents filed. Many companies in New Zealand are focussed on research and development, increasing domestic and export growth, and voluntary acquisition. Developments in the United States are important to such companies as the United States represents a significant market opportunity.

The United States Courts have previously held in State Street that a computer implemented business process was patentable. Most business method patents issued by the United States Patent and Trade Mark Office (USPTO) since State Street in 1998 do combine a business process with a tangible component. In most cases this tangible component is computer technology such as the Internet.

In Ex parte Bilski, the Board of Patent Appeals and Interferences questioned whether a non implemented business process should be patentable. The Board refused the patent for a method of managing risk at a reduced cost. The claims at issue were not tied to any physical structure. They did not recite a physical transformation. The subject matter of the claims could be performed entirely by human beings.

In May 2008, the Court of Appeals for the Federal Circuit listened to arguments in an appeal on this case. The Court heard the case en banc. This means that all of the Judges were present. The Court of Appeals heard oral arguments from both the applicant and the USPTO. The Court also reviewed almost 40 amici briefs. An amicus brief is a submission from an interested party that is not a formal party to the proceedings. Some of the amici briefs supported the applicant. Some supported the USPTO. Others supported neither party.

The U.S Court is now considering the core issue of what is and what is not patentable subject matter. A particular focus is on “method of doing business” patents. The Court is expected to issue a decision in the 6-8 months. It is therefore likely that we won’t see any clarification on this important issue this side of Christmas.

Trivia – Scrabulous game on Facebook

Scrabulous is an on-line application developed by two brothers in Calcutta, India. The on-line game was launched in July 2006 at the website www.scrabulous.com. The game really received prominence when the Agarwalla brothers repackaged the application into a form that could be downloaded and run from within the popular Facebook application.

It is a matter of opinion whether Scrabulous is inspired by the commercial board game Scrabble or whether it is a blatant copyright infringement.

Those with intellectual property rights in Scrabble are reported to be J W Spear and Sons Limited, Hasbro and Mattel. These parties are understood to be unhappy with the Agarwalla brothers and over the last few months have supposedly:

• shut Scrabulous down
• entered into negotiations to purchase Scrabulous
• launched an official on-line Scrabble Facebook application.
• sued the brothers for copyright and trade mark infringement.

There is not much in the way of facts but that doesn’t stop people having opinions.

Facebook users have set up interest groups pledging their loyalties either way. Examples on one side include the groups “Save Scrabulous” (45,308 members), “Save Scrabulous! Give us Scrabulous or give us death” (7,397 members) and “Please, God, I have so little: Don’t take Scrabulous too” (568 members).

In the opposing camp there are the groups “Sue Scrabulous, Save Scrabble” (11 members), “We liked Scrabulous but intellectual property theft is wrong” (7 members) and “Boycotting New Scrabulous Games Until The Creators Stop Being Greedy” (4 members).

We’ll watch with interest. Now, where did Chip Chat put that old Scrabble board?!

New Patents Bill is software friendly

The Patents Bill has now been introduced to Parliament. The Bill makes significant improvements to our existing patent law and brings New Zealand patent law more into line with international practice.

The Bill in its present form maintains the patentability of computer software.

Under the present 1953 Act a patentable invention must fall within the definition of “invention” in section 2. An invention means “any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies……”

Under the new Bill an invention is patentable if it:

• is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies
• is novel
• involves an inventive step
• is useful
• is not excluded from patentability.

The Bill contains some specific exclusions. None of the exclusions involve computer software. Unless of course the commercial exploitation of a computer software invention would be contrary to public order or morality. It is difficult to envisage a computer software invention that would be contrary to one or both.

It is good to see that the term “manner of manufacture” has been retained in the new definition. This suggests that current case law favourable to computer software patentability will continue to apply to applications filed under the new regime.

Patenting your invention in eight simple steps – Step 6

You have decided to proceed with a patent application. What do you have to prepare to get a patent granted? It’s time to prepare the patent specification.

A patent is a bit like a bargain. You agree to tell the New Zealand public something that they don’t already know about and that is useful. In return you get the right to exclude unauthorised use of your invention while your patent is in force.
A patent specification typically includes:

• a set of claims
• a description
• a set of drawings.

Claims
The claims are the most important part of the patent specification. The claims set out clearly the scope of protection you are entitled to. If you define the scope too broadly you will have problems with prior art. Searching for prior art and assessing prior art are described in earlier editions of CHIP CHAT.

If you define the scope of protection too narrowly it will be easy for competitors to get around your patent. This will severely reduce the effectiveness and value of your patent.

Description
The description part of the patent specification needs to be a full disclosure of the invention. Every feature of the claims should be described in detail. The description should be sufficiently detailed to enable a skilled person to implement the invention. The description should at least describe what the invention does and how it does it. The description typically includes:

• the name of the invention
• the components of the invention
• the function of each component
• what components are new
• how the components interact
• which components are essential
• whether components can be substituted for other components.

The description does not normally include source code. Sometimes the description can include short sections of code if this is necessary to adequately describe the invention.

Drawings
Drawings are a good idea to include in a patent specification. It is helpful to include overall system and network diagrams as well as any relevant flowcharts. Sometimes we include table structures and user interface forms if these are important to how the invention works.

A patent specification is a difficult document to prepare. If it is done correctly it will give it’s owner valuable patent rights for 20 years. If it is done badly it will provide nothing and cost plenty.

Watch out for the next issue of CHIP CHAT for step 7.

Bio of the month: Matt Devine

Matt Devine is a senior associate based in our Auckland office. He is a registered patent attorney and a Fellow of the New Zealand Institute of Patent Attorneys.

Matt works for a range of corporates, SMEs, start-ups and individuals. He assists clients to utilise their intellectual property as part of an overall commercial strategy.

He specialises in advising on intellectual property aspects of clients’ businesses, providing strategies for using intellectual property and obtaining protection for that intellectual property. Matt has particular expertise in patents, designs, copyright and related intellectual property work for electrical and mechanical engineering, telecommunications, and software technology.

As part of Matt’s role he:

• advises clients on intellectual property aspects of their business
• advises on and implements strategies for utilising clients’ intellectual property in Australasia and internationally
• obtains patent and design protection, both in Australasia and internationally
• conducts patentability and infringement searches and analyses