Friday, 30th August, 2013
New Zealand takes a traditional approach to software patents
Common sense has prevailed. New Zealand will continue to grant patents for inventions that make use of or involve a computer program.
The current law
Until the new law comes into force, inventions will be assessed under the Patents Act 1953 (the old act). The old act defines an invention as any "manner of new manufacture". What is patentable subject matter and what is not patentable subject matter is defined by case law and decisions of the Commissioner of Patents.
The Hughes Aircraft Company decision established the appropriate test for patentable subject matter in 1995 as:
… whether each of the claims define a method which, either directly or by clear implication, embodies a commercially useful effect.
The Haddad decision held that the term "manner of new manufacture" implies a situation which involves some sort of interaction with a real entity or which achieves a tangible product or result.
A blanket exclusion
A draft Patents Bill was released for public consultation nearly 10 years ago in December 2004. It did not restrict or exclude patents for computer-implemented inventions. A new government introduced the Patents Bill to Parliament in July 2008.
The Patents Bill was referred to the parliamentary Commerce Select Committee which then called for submissions. Many of the submitters were from the New Zealand Open Source Society (NZOSS) or their supporters who wanted an exclusion for computer programs. Many submissions urged a consistency of approach with other markets. The NZOSS for example suggested that "New Zealand could follow the European lead in patent law".
The committee published a revised Patents Bill in March 2010. The revised bill included new clause 15 (3A) simply reading "a computer program is not a patentable invention".
The view of government officials was that the committee intended this to be interpreted similarly to the interpretation of similar exclusions in the legislation of other countries, in particular the United Kingdom and other European members. This would allow computer programs to be patented if they produce a "technical effect".
There was understandable concern that the wording proposed by the committee did not clearly express the committee's intention. There was also concern that the courts would not interpret the restriction in the manner intended by the committee.
The 'as such' restriction
The government introduced supplementary order paper SOP 120 to better align the proposed wording of the exclusion with:
- the intention of the committee
- New Zealand's international obligations
- overseas precedents.
The new clause had a European look about it as it excluded computer programs "as such".
The new clause upset many of those submitters who had asked the Commerce Select Committee for an exclusion for computer programs. In order to address these concerns the government introduced supplementary order paper SOP 237. New clause 10A introduced by SOP 237 reads as follows.
10A 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:
(a) the substance of the claim (rather than its form and the contribution alleged by the applicant) and the actual contribution it makes:
(b) what problem or other issue is to be solved or addressed:
(c) how the relevant product or process solves or addresses the problem or other issue:
(d) the advantages or benefits of solving or addressing the problem or other issue in that manner:
(e) any other matters the Commissioner or the court thinks is 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.
Interpretation of the new restriction
Clause 10A contains several additional new clauses intended to provide additional guidance on the proper interpretation of the phrase "computer program as such". The phrase is intended to be interpreted in a manner that is consistent with New Zealand's international obligations under the agreement on Trade-Related aspects of Intellectual Property Rights (TRIPS). The intent of parliament is to codify in legislation the first three steps of a test set out in an English Court of Appeal decision known as the Aerotel test.
There is a clear direction to the Commissioner of Patents and the New Zealand courts to apply the Aerotel test and subsequent English jurisprudence that applies the test when considering patent applications involving computer programs. The UK courts for example have allowed patents for a computer programmed to work better (Symbian), a better way of designing drill bits (Halliburton), a technique for monitoring the content of electronic communications (Protecting Kids the World Over), and organisation of touch screen devices (HTC Europe v Apple). There are very few New Zealand cases in this field of patent law. The ability to refer to United Kingdom case law will certainly be of assistance.
Under the new law it will not be possible to obtain a patent for an invention that involves or makes use of a computer program if the alleged inventive feature lies solely in it being a computer program. However, a patent may still be granted for an invention that makes use of or involves a computer program if the actual contribution made by the invention lies outside of the computer or affects the computer itself but is not dependent on the type of data being processed or the particular application being used.
The way forward
As set out above, New Zealand will continue to grant patents for inventions that make use of or involve computer programs. There is clearly expressed parliamentary intention to apply the Aerotel test and subsequent English jurisprudence that applies this test.