IsoLynx, LLC [2022] NZIPOPAT 16
After finding "a real-world interaction", the Intellectual Property Office of New Zealand has granted a patent in relation to a system for locating tracking tags within an area in IsoLynx, LLC [2022] NZIPOPAT 16 (8 November 2022).
The main point of contention was whether the invention relates to a computer program as such, or if the actual contribution is more than a computer program as such.
The New Zealand Framework
Under the New Zealand Patents Act 2013, section 11 states that a patent cannot be granted for an invention which 'relates to a computer program as such' or if the actual contribution lies 'solely in it being a computer program'.
By way of example, section 11 explains that a computer program for controlling the operation of a washing machine to provide a new and improved way of operating a washing machine that gets clothes cleaner and uses less electricity, may be patentable, as the actual contribution lies in the way in which the washing machine works (rather than in the computer program per se).
Conversely, a computer program for automatically completing the legal documents necessary to register an entity, and operates on a conventional computer system, is not patentable as the only new element was the computer program itself.
For most software inventions, it can be difficult to identify an element that was not only new, but also produces an effect outside of the computer system.
What is a 'Real-World' Tracking System?
IsoLynx's invention relates to a system that informs a user of errors in a tracking tag location using visual indicators. The location of each tracking tag is determined by positioning receivers around the area so that a signal transmitted by a tracking tag is received at a discrete time. Errors may occur due to unpredictable environmental conditions, insufficient number of receivers, no convergence, or poor reception. Multiple tracking tag locations may be displayed as a graphical representation of a tracking area.
However, in existing tracking systems, it was not easy to readily identify when displayed locations were incorrect.
IsoLynx's solution was to generate a line connecting pairs of chronologically consecutive locations on the graphical representation so that the line is only visible when at least one of the chronologically consecutive locations is erroneous.
The Five 'Signposts' and a Technical Effect Outside the Computer
To determine whether an invention including a computer program is patentable, New Zealand Examiners typically refer to the following five signposts:
- whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
- whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
- whether the claimed technical effect results in the computer being made to operate in a new way;
- whether the program made the computer a better computer in the sense of running more efficiently and effectively as a computer;
- whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
With respect to signpost (i), the Delegate went to great lengths to explain that simply displaying information on a screen did not produce an effect outside the computer even if the information originates from the real world. However, in IsoLynx's case, showing an error in a tracking system display was more than just running a computer program. The Delegate considered that IsoLynx's invention translates real world data into a digital form and enables a user to easily recognise errors by providing a visual indication of where those symbols show locations wrongly.
This was found to constitute a real-world interaction as it provided useful information about real-world conditions.
The Delegate also found that IsoLynx's invention met signpost (v) as it does not skirt around, avoid, or circumvent the problem, but directly addresses it.
The Interplay Between the Digital and the Physical Realm
Whilst this decision provides some long-awaited clarity for New Zealand software patents, overcoming patentable subject matter objections in New Zealand continues to prove challenging. This particularly applies to software inventions that do not have much, if any, interaction with the physical world.
However, this decision demonstrates that software inventions do not strictly need to produce a real-world outcome, but it is sufficient that the software establishes a real-world interaction.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
