A recent decision by the Commissioner – 3M Innovative Properties Company  NZIPOPAT 5 (19 May 2022) – came out from Intellectual Property Office of New Zealand (IPONZ) that dealt with the issue of patentable subject matter in New Zealand.
In the judgement, the Commissioner confirmed a few things, notably:
- That the applicant is required to actively prosecute its application.
- That there is no presumption of patentability, either during examination or at any other stage in the life of the patent.
- The onus is on the applicant to establish that the application is eligible for grant.
- The standard of proof is explicitly stated as being the “on the balance of probabilities.”
The main issues revolved around the application of Section 11 of the Patents Act 2013.
Section 11 states:
11. Computer programs
- A computer program is not an invention and not a manner of manufacture for the purposes of this Act.
- 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.
- 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.
- The Commissioner or the court (as the case may be) must, in identifying the actual contribution made by the alleged invention, consider the following:
- the substance of the claim (rather than its form and the contribution alleged by the applicant) and the actual contribution it makes:
- what problem or other issue is to be solved or addressed:
- how the relevant product or process solves or addresses the problem or other issue:
- the advantages or benefits of solving or addressing the problem or other issue in that manner:
- any other matters the Commissioner or the court thinks relevant.
- 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.
An investigation into the history of the section revealed that it was intended by the legislature that the test for patentable subject matter as set out by the UK Court of Appeal in Aerotel Ltd v Telco Holdings Ltd (“Aerotel”) be applied when considering patent applications involving computer programs.
This test involved four steps:
- properly construe the claim;
- identify the actual contribution;
- ask whether it falls solely within the excluded subject matter; and
- check whether the actual or alleged contribution is actually technical in nature.
It is notable that the wording of the fourth step of this test is not actually adopted into the wording of Section 11. This approach is also divergent from the subsequent approach of the European Boards of Appeal, meaning that European authorities offer little assistance in interpreting and applying the NZ statutory test.
The Application in question relates to a method for the identification and analysis of copied and pasted passages in medical documents. A problem has been identified relating to the copying of information from a first medical document into a second medical document. Sometimes the text of a copy-paste passage, while relevant to the first medical document, may be inaccurate for the second medical document. The Application discloses methods for identification of a copy-paste passage in a medical record, different factors for determining a risk level for that passage, and indicating a likelihood of inaccurate information.
The first claim reads as follows:
- A computer-implemented method for managing medical information, the method comprising:
- receiving, by a computing device, a second medical document related to a patient encounter;
- determining, by the computing device, that a passage of the second medical document has been copied from a first medical document by monitoring user input to the computing device that utilizes any copy and paste functionality;
- determining, by the computing device, a risk level for the passage based on whether the passage has an intradocument conflict, the risk level indicating a likelihood that the passage includes inaccurate information regarding the patient encounter;
- determining, by the computing device, that the risk level exceeds a risk threshold; and
- outputting, by the computing device, an indication of the passage for which the risk level exceeds the risk threshold.
The Commissioner held that “the actual contribution made by the alleged invention” in section 11(3) must be read as the actual contribution made by the alleged invention as claimed in the claim under consideration.
The Applicant argued that the claims recite the practical application of outputting an identification of the copy-paste passage, the risk level for it, and the percentage match, and that the outputting, by specific visual display of information, addresses the problem of inaccurate or erroneous information being copied and pasted from one medical document to another.
The Commissioner followed the test above, firstly construing the claim simply as being the combination of the steps in claim 1. Determining an “intradocument conflict” was regarded as being an important aspect of the claimed invention. The specification described an intradocument conflict as “actions or statements that directly contradict each other” and provides an example of this. Other risk indicators such as “temporal issues” and “interdocument inconsistencies” were ignored by the Commissioner.
In the next step of identifying the actual contribution, the Commissioner agreed with the UK cases that in order to identify the actual contribution, the alleged invention must be compared with the prior art (as opposed to the EPO authorities that state that a consideration of whether a claim relates to prohibited subject matter must not include any consideration of prior art).
The Commissioner reviewed prior art that also identified the same problem (inaccurate medical records resulting from inappropriate use of copy-paste) and discloses the identification of when copy-paste has been used. In doing so, the prior art compares documents to identify common phrases.
The present invention circumvented the requirement for document comparison by monitoring when user input to the computing device to track copy and paste actions. However, the Commissioner stated that the applicant’s contribution cannot lie in the monitoring step alone as no new means for monitoring this input was disclosed. The Commissioner then went through each step individually, noting that they do not in themselves appear to add to human knowledge.
The Commissioner then considered the claim as a whole, taking section 11(4) into account. The substance of the claim was identified as being the combination of the individual steps.
The Commissioner identified both a main problem and a subsidiary problem. The main problem was determined as being “the introduction of inaccuracies into medical documents as a result of inappropriate use of copy-paste.” The subsidiary problem was first to identify parts of a medical document with a higher risk of containing an inaccuracy introduced by the use of copy-paste. It was regarded as being implicit by the Examiner that in identifying inaccuracies, the purpose is to then resolve them.
The solution to the identified problem was by applying a series of filters to the content of the medical document. First it monitors user input to identify when copy-paste functionality has been used. This first filter focuses the system on only those parts of the document that have been created using copy-paste. Second it compares the content of those parts with the rest of the document to identify intradocument conflicts. Third it determines a risk level based on the presence of an intradocument conflict. Fourth it determines whether that risk level exceeds a risk threshold. It then flags only those passages meeting all requirements (created by copy-paste, having an intradocument conflict and thus a level of risk, and the risk level exceeding the risk threshold) as an output.
The advantages were identified by the Commissioner as being able to pinpoint the potential inaccuracies.
The Commissioner then considered whether the actual contribution made by the alleged invention lied solely in it being a computer program. The Commissioner held that:
- The claimed method does not require the use of any new hardware, alter the way in which the computer operates at an architectural level, make it operate in a new way, or make a better computer.
- It may be possible to imagine the same contribution being performed manually, either by a user or a third party.
- For these reasons the actual contribution of the invention lies in it being a computer program, and it is not an invention for the purposes of the Act.
The above decision aligns with Baxter IP’s global best practice standards to include more technical implementation details in the patent specification in the first place. As an example, Baxter IP recently overcame a subject matter rejection for our client’s New Zealand patent application by relying on the technical implementation details and clarifying with the Examiner that the invention is a control system instead of a “computer program as such”. This is because we had anticipated that inherent patentability of the subject matter might be an issue and had included more implementation details in the patent specification when drafting the patent specification.
For advice on global best practice services, please feel free to call up and speak to one of our attorneys.