It has now been three years since the New Zealand Patents Act 2013 came into force. Under the current law, an invention is a patentable invention if it is a ‘manner of manufacture’, novel, and involves an inventive step. Section 11 of the Act excludes computer programs ‘as such’ from the definition of invention.
Submissions on the Patents Bill to the Parliamentary Commerce Select Committee demonstrated a range of views on what the existing law was at the time, how the law should be, and how a computer program exclusion would work in practice.
For the last three years, the Intellectual Property Office of New Zealand (IPONZ) has quietly gone about its business of assessing the patentability of new inventions under the legislation handed to it by Parliament. We now have some more guidance on the computer program exclusion.
Is the contribution a computer program as such?
The Minister responsible for the new legislation gave a clear direction to IPONZ 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.
An English court in AT&T Knowledge Ventures LP, Re  EWHC 343 (Pat) formulated five ‘signposts’ that would indicate patentable subject matter within a software invention. These five signposts look at:
- 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 there is an increase in the speed or reliability of the computer; and
- whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
These signposts represent 'easy wins'. If a claimed invention satisfies one of these tests, then it is likely to be eligible for patent protection under the new law. What we have noticed over the last three years, is that two of these signposts are applied more frequently than others in the case of software inventions.
A process carried on outside the computer
IPONZ’s view is that a computer program must affect, or operate on, something that is outside the computer that the program is running on. The term ‘computer’ is not necessarily confined to a single computing device. Two or more computers connected by a network could count as a single computer.
Some patent-eligible inventions operate on a network containing more than just networked computers. In one example, an invention used the services of a trusted third party (TTP) server to enable a phone call to obtain approval for an e-business transaction. The applicant was able to demonstrate that the invention handled data across and within different devices within a network that could be considered more than just networked computers.
In other cases, a patent-eligible invention may affect a real-life situation outside a computer or network of computers. In one example, an invention provided a method for allowing individuals to query enormous data sets easily. The method included performing a workflow within an application. This workflow was said to perform or create a real-world activity in a more efficient way.
A computer operating in a new way
Sometimes the effect of a computer program is to make a computer operate in a new way. IPONZ takes the view that this effect must go beyond the normal interactions between a computer program and a general purpose computer.
User authentication is one such example. A successful patent applicant claimed an improvement in the security of user accounts. The method of the invention generates a one-time security matrix that is valid only for the user during the authentication session. Providing an improved authentication mechanism for user access is one example of causing a computer to operate in a new way.
User interfaces are another example of patent-eligible subject matter. One applicant recognised the problem caused by the small keypads displayed on the screens of smartphones. Users type wrong letters more often on a smartphone keypad than a conventional keyboard. The method of the invention predicts what a user meant to type on a smartphone keypad by accessing a database of possible words. This was found to be an improved user interface for smartphone users and eligible for patent protection.
Protecting a software invention
So the answer to the question, ‘can I patent my software invention’, still isn’t a simple one. But, we’ve come a long way from where we were three years ago. We now have several examples of software inventions protected under a law that excludes computer programs from patent protection. These examples help us assess whether or not a particular software invention is patentable under the New Zealand Patents Act 2013.
If you’ve got a software invention which you’d like to protect, please don’t hesitate to get in touch.