Patently a Winner

Posted on: August 22, 2006 - 13:55 By: Feynmanfan

Last year the NZOSS filed a opposition to a XML Word Processing patent filed by Microsoft. Yesterday a resolution to the opposition was achieved when the NZOSS Council decided that all our objectives had been achieved, and that the NZOSS would not be following through to a hearing.

Microsoft in their counter statement had unconditionally amended the patent in a way that avoided issues surrounding prior use and prior publication. Abiword was the primary evidence stated in the NZOSS statement of case as prior use, and it was on this basis that the NZOSS claimed that the patent was invalid. The amended patent was substantially modified, including only seven claims rather than the original number of more than twenty. The amended claims were also more specific, and would no longer create issues for software developers who wished to interoperate with Microsoft XML file formats.

The NZOSS patents project begun at the 2004 AGM, where it was decided that the NZOSS patent team would examine patents for one to oppose, and take action to oppose it if appropriate. The parameters for the decision related to whether prior art existed for the patent in question, and whether the patent threatened software innovation or discouraged competition. The Microsoft XML Word Processing patent matched both of those criterion.

The patent itself was overty broad and obvious, simply claiming that using XSD to validate a XML word processing document was enough to infringe. Potentially there were tens if not hundreds of examples of prior use around the world. XML itself was design for exactly the purpose described in the patent, along with XSD validation schemas. A stronger case against the patent was in the form of Abiword, which first used XML to store word processing documents in 1998. Abiword stored word processing files as uncompressed XML.

It was long after putting together the research for the statement of case that the NZOSS patent team discovered the US rejection of the very same patent. This rejection cited many of the same prior use evidence, including Abiword. Once there was a clear idea of the evidence permission was granted by the NZOSS Council to proceed. David Marriott from James and Wells was then hired as the lawyer to handle the opposition.

During the process of filing a notice of opposition and statement of case the NZOSS patent team gained important information about how to proceed in an opposition. A J Park, Microsoft's legal council responded to our opposition by amending the patent, but denying many of the points in our statement of case. However, the amendments were significant. In effect the changes had eliminated any ability for Microsoft to use the patent to protect their file formats in future, at least by using this patent. In effect the NZOSS had achieved what it had set out to do; protect freedom of choice, and encourage open competition. Consequently the NZOSS Council resolved to terminate the opposition.