Friday 27 May 2016
New Zealand patent office issues first software patent under new law
One of the hotly-debated topics during New Zealand’s patent law reform was the extent to which patent protection should be available for computer-implemented inventions. There is a widely held belief that we now have a ban on software patents. So how did the Intellectual Property Office of New Zealand (IPONZ) issue a software patent under the new law that bans them?
The current law
An invention is a patentable invention if it is a ‘manner of manufacture’, is novel, and involves an inventive step. Section 11 of the Patents Act 2013 excludes computer programs ‘as such’ from the definition of invention.
The exclusion is there as a result of submissions to the parliamentary Commerce Select Committee from the New Zealand Open Source Society (NZOSS) and their supporters. Many submitters 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 Minister responsible for the new legislation gave a clear direction to the Commissioner of Patents and the New Zealand courts to seek guidance from the English courts when considering computer programs ‘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.
Which begs the question – when does an actual contribution lie solely in a computer program? We don’t quite have an answer to that. But we are one step closer.
Radio receiver design
New Zealand patent 702006 discloses a method and system to analyse interference susceptibility of a radio receiver design. Radio frequency (RF) receivers suffer performance degradation caused by transmissions from nearby transmitters. These negative effects have previously been simulated in the lab by a costly design-build-test-modify process.
The invention provides software code that permits a user to predict, analyse or simulate the interference susceptibility of a receiver before any hardware is actually manufactured. The software runs on a general-purpose computer, for example a desktop, laptop or tablet. The output is a graph showing transmit power levels that result in performance degradation.
So how can software running on a general-purpose computer qualify for patent protection under a law that bans software patents?
Applying the law
IPONZ initially objected that the claimed invention was directed to a computer program as such. IPONZ said that the actual contribution appears to be no more than a plot or graph based on calculated values being determined transmit power levels.
The applicant successfully argued that the claimed invention is directed to simulating interference susceptibility performance of a radio receiver design. This has real-world, practical applications. The invention enables receiver performance to be assessed without requiring the receiver to be actually built.
The claimed invention was a computer-implemented method for evaluating interference susceptibility performance of a radio receiver design, rather than a computer program as such.
A technical problem
A few years ago the English High Court dealt with the same misconception that computer-implemented inventions are by definition excluded from patent protection. In Re Halliburton Energy Services Inc  EWHC 2508 (Pat) (05 October 2011) the Court allowed a patent for an invention concerned with improving the design of roller cone drill bits for drilling oil wells.
The intention was to increase the drilling efficiency and the operational life of drill bits. The invention used a computer simulation of the interaction of the drill bit with the material being drilled to optimise various design features of the drill bits. The use of computer simulation reduced or eliminated extensive field testing.
The Court observed that designing drill bits is obviously a highly technical process, capable of being applied industrially. Drill bit designers are highly skilled engineers. The detailed problems to be solved with wear and ability to cut rock and so on are technical problems with technical solutions. Therefore finding a better way of designing drilling bits is itself a technical problem.
The claimed invention was a computer-implemented method of designing drill bits, rather than a computer program as such.
It was accepted that a process for evaluating interference susceptibility performance of a radio receiver design is a patentable invention. Computer implementation of this process avoided a costly design-build-test-modify process by enabling a simulation without requiring a receiver to be actually built.
It’s good to see IPONZ follow the European lead in patent law. When assessing a patent application involving computer programs, it’s not a question of whether or not it’s a software patent. The question is whether or not the contribution lies in a patent-eligible field. If so, then it doesn’t matter whether or not it’s implemented in software.