Teamwork heads off patent grab

By PETER GRIFFIN

A group of small technology companies have banded together to fight off a patent application that threatened to limit the businesses of local wireless application developers.

The companies are now urging New Zealanders to be more vigilant in monitoring the patent applications as "apathy" around the issue may cost them dearly.

Auckland-based Econz and TVD are usually competing with each other to provide wireless data services to businesses.

But they and trunk radio operator Teamtalk pooled their financial and legal resources to head off a patent application that was lodged by Swiss technology giant ABB.

ABB, which makes machinery for power utilities and heavy industry, had local revenue of nearly $80 million in its last reported financial period of 2002 and a profit of $4.4 million. It has been granted a number of patents locally, mainly for mechanical devices used in the energy sector.

A broad-ranging ABB patent application claimed ownership of a "mobile crew management system for distributing work orders to mobile field units".

In its application filed with the Intellectual Property Office of New Zealand (Iponz), ABB said the "present invention provides a system for assigning work orders, communicating work orders to deployed field personnel and communicating at the request of field personnel, up-to-date data related to an assigned work order."

TVD chief executive Andrew Thompson said the patent application spelled out processes TVD had been carrying out for years.

"We'd been doing work back in the days of BellSouth using Apple Newtons.

"We put together a case based on prior art and challenged ABB's claim of prior art," said Thompson, who was alerted to the patent application by his client, lines company Vector.

"On some of the stuff we can go back as far as 1984," said Econz chief executive Michael Hartley.

Law firm Simpson Grierson challenged the patent on behalf of the tech companies, presenting a case of "prior art" - showing Iponz that the theories described in ABB's patent application had already been put into effect.

Soon afterwards, ABB withdrew its application - a small victory for the patent opponents, but a big lesson for the industry.

Had ABB succeeded with its application it might have been able to charge TVD, Econz and Teamtalk royalties.

Telecom also supported the counterclaim to protect the Service+ offering it sells in conjunction with Econz.

"They saw it was a threat to their revenue stream by limiting the number of developers in the market," said Hartley.

But, to the disappointment of the patent opponents, Vodafone decided to stay out of the fight, despite being a major wireless data player.


Simpson Grierson's Earl Gray said the companies did well to mount opposition to the patent in the narrow window before it was rubber- stamped by the Intellectual Property Office. Appealing to have a patent overturned after it had been granted was much more difficult.

"Fighting a rear-guard action at the High Court is a bit more challenging," he said.

Gray was involved in an ongoing patent case, opposing on behalf of a client a patent application around text-messaging promotions that had been lodged by the company Cool 123 and Pipers Patent Attorneys.

Econz, which does not have any patents of its own, would keep close tabs on new patent applications from now on.

"We're more aware of it now and we're going to put some processes in place to monitor it," said Hartley, who was considering asking industry body Wireless Data Forum to co-ordinate patent monitoring.

"It's not the patents that represent the greatest threat, but the apathy in not challenging them," said Thompson.

Canadian company DE Technologies' attempts to draw royalties from local e-commerce operators based on a patent it was granted here shook the IT industry last year and led to the formation of the website www.fightthepatent.co.nz.

While DE Technologies' bid to cash in on its patent appears to have failed so far, the case led the Internet Society to form the Patent Advisory Group and set up IP Watch - a database of new patent applications.

The system has been running for several months as an "early warning system" for tech companies.


Internet New Zealand Patent Watch Resource Library

Intellectual Property Office