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Thursday, 29 August 2013

New Patents Act in New Zealand

The IPKat (well this one, at least) is always excited by news of a new Patents Act, and so he was jolly pleased to read in his Twitter feed that the New Zealand Patents Bill was finally passed by its Parliament yesterday, on 28 August 2013.

Much of the previous coverage  (including on the IPKat here), and the chatter from yesterday, focused on the exclusion from patentability of software.  The IPKat believes that what has been agreed is the following:

10A Computer programs
(1) A computer program is not an invention and not a manner of manufacture for the purposes of this Act.
(2) 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.
(3) 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.
 (4) 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
relevant.
(5) 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.
European practitioners will see resonances in the "as such" language, and the IPKat is given to understand that the expectation is that the approach taken will be similar to that in the UK.

Perusing the Bill, the IPKat was delighted, if astonished, to see that a patentable invention is still defined with reference to "a manner of manufacture within the meaning of section 6 of the Statute of Monopolies" (you know, this Statute of Monopolies - from 1623).

This Kat recalls that under the old (current) New Zealand law methods of medical treatment were considered not patentable as being contrary to morality, in the absence of any statutory exclusion, and is therefore not surprised to see that this position is regularised in specific exclusions:
An invention of a method of treatment of human beings by surgery or therapy is not a patentable invention.
An invention of a method of diagnosis practised on human beings is not a patentable invention.
Again, these exclusions will be familiar to European practitioners.

Naturally, a number of New Zealand firms have blogged about this development - the IPKat has consulted posts from AJ Park and Henry Hughes.  And of course the software angle has been extensively covered by Florian Mueller, who has helped to counter the popular (incorrect) reporting that software patents have been "banned" in New Zealand, whereas the reality is much more nuanced.

Merpel notes that New Zealand legislative process rivals European law-making for speed - this Bill apparently started in 2008!

UPDATE 30/8/13 Thanks to Twitter commenter @nzPaulM and comment from Ken Moon (9th comment) below, the IPKat has realised that the original blog post inadvertently omitted sub-sections (4) and (5) of Section10A.  These have now been added above.  The essential point that New Zealand is aligning its statute with the UK jurisprudence on patentability of software seems to apply equally to these sub-sections.

Not inadvertently, the IPKat omitted the "Examples" - to a process using a washing machine and a process for automatically completing a document - as they are rather lengthy and don't seem to be especially helpful to understanding the new law.  You can read the whole proposal for Section 10A including all of this material in Supplementary Order Paper (SOP) No. 237 downloadable (together with other material relating to the Bill) from the New Zealand legislation website here.

13 comments:

Suleman said...

Nice to see business methods are not specifically excluded.

I wish them well developing the 'as such' case law.

I also wish them well developing inventive step examination at the Patent Office. I suspect they will remain lenient for many years to come, especially in complex technical areas.

Anonymous said...

On MoM, hear, hear! In my opinion, simply the greatest definition of "invention" ever made, especially after the Australian High Court's famous NRDC decision stretched (exploded actually) the boundaries of "Morton's Rules". Morton J. never meant them to be hard and fast rules, but everybody took them as such - until NRDC. Long may MoM reign Downunder.

Anonymous said...

The original bill contained some grim reading that showed how easily politicians are swayed by FOSS ideologues, and why we must be vigilant about calling out dumb FOSS arguments:

Patentable inventions
We recommend amending clause 15 to include computer programs
among inventions that may not be patented. We received many submissions
concerning the patentability of computer programs. Under
the Patents Act 1953 computer programs can be patented in New
Zealand provided they produce a commercially useful effect.3 Open
source, or free, software has grown in popularity since the 1980s.
Protecting software by patenting is inconsistent with the open source
model, and its proponents oppose it. A number of submitters argued
that there is no “inventive step” in software development, as “new”
software invariably builds on existing software. They felt that computer
software should be excluded from patent protection as software
patents can stifle innovation and competition, and can be granted for
trivial or existing techniques. In general we accept this position.
While the bill would provide adequate incentives for innovation,
however, we are aware of New Zealand companies who have
invested in a significant number of software-related inventions,
involving embedded software.4 We sought advice on the approach
taken in other jurisdictions such as the United Kingdom and the
United States, and whether legislation that would enable “embedded
software” to be patentable might be practicable. After careful
consideration we concluded that developing a clear and definitive
distinction between embedded and other types of software is not a
simple matter; and that, for the sake of clarity, a simple approach
would be best. We received advice that our recommendation to
include computer programs among the inventions that may not be
patented would be unlikely to prevent the granting of patents for
inventions involving embedded software.
We recommend that the Intellectual Property Office of New Zealand
develop guidelines for inventions containing embedded software.

‘Embedded software’ is defined as
Embedded software is computer software which plays an integral role in
the electronics it is supplied with (e.g. cars, pacemakers, telephones, and
washing machines).

Anonymous said...

Does this not fly in the face of international accords that keep open for patentability 'all areas of technology?'

If you have something that could never be done before on a computer, and someone invents a way of doing it on a computer (through software), is this not a technological advance in its own right?

All this does is guarantee more work to those in the art of the scrivener (patent attorneys) to disguise software technology as a system that 'happens to include software, thus not the software as such.'

Bah - the more things change, the more things stay the same.

Anonymous said...

@Anonymous 12:31

If I load a novel music roll onto a mechanical pianola, have I created a new technical invention, worthy of patent protection?

If I load a novel computer program onto a processor, have I created a new technical invention, worthy of patent protection?

Anonymous said...

Anonymous @ 13:32,

Music?

That argument is dead on arrival.

Do I need to explain why?

Either you will understand immediately, or you will be incapable of understanding in this forum of blogging.

Conversely, you create a new type of 'music roll' - does the fact that it is a medium for music mean it is any less technical?

Anonymous said...

@Anonymous 13:58

Your condescension does you no favours.

The invention would not be music "as such". It would be a programmable machine, programmed to generate a novel pattern of sounds. Much like a new computer game produces a novel pattern of pixel illuminations.

The original questioner (you?) asked: "If you have something that could never be done before on a computer [a programmable machine], and someone invents a way of doing it on a computer (through software [instructions]), is this not a technological advance in its own right?"

The answer should be "no", unless you accept that inventing a way of causing a pianola (or a knitting machine, come to that) to generate a novel output is a technological advance.

Anonymous said...

Anonymous @ 15:08,

Condescension? Sorry, none of that here.

Your attempt at using music as a strawman is a pitiful attempt at portraying ALL software as merely doing the same thing: doing what a computer 'does.' It is a vacuous and fallacious argument. It is simply not a matter of "a novel output." And all of the 'per se's' and 'as such's' won't help you with the basic understanding that software is technological, every bit* as firmware and every bit* as hardware.

*pun intended

ken Moon said...

The computer program provision does not exclude program inventions from patentability. More slyly it says computer programs cannot be inventions. No doubt the Ministry of Commerce advisors think this gets around the TRIPS issue.

s.10A(4), not so far addressed might help courts. For identifying the contribution of the alleged invention it requires consideration of claim substance and not form; the problem to be solved; how the product or process solves the problem; and the advantages of solving the problem in that manner. familiar perhaps to UK practitioners.

Unfortunately all NZ governments have had little or no interest in patent law (or any other IP law) and thus while extremely frustrating it was no surprise the passage of the Bill took 5 years. it might be another year before regulations are drafted and the Act comes into force!

Anonymous said...

@Anonymous 16:49

You seem to have missed the point. I have never suggested that ALL software is non-technical. The original question (posed by you?) asked whether novel software is necessarily a technical advance. It requires only one counterexample for the answer to this question to be "no".

A exemplary pianola analogy for a "technical" computer program would be a music roll pattern that was so arranged that it caused some part of the mechanical workings of the pianola to resonate audibly so as to enhance the musical output of the pianola. This would arguably make the pianola a "better pianola".

You do not appear to have provided any justification for your assertions that all computer programs are technological while all pianola rolls are not. Simply saying stating this repeatedly does not make you right.

Anonymous said...

Anonymous @10:32,

Sorry, but no - I did not miss the point.

Software is written to do something. That is the purview of patent protection.

It is as simple as that.

You can take an example from any category that merits patent protection and come up with a single counterexample that does not merit patent protection. Under your logic, this means that nothing is patentable.

Your logic is flawed, and seriously so.

That you think I offer "no justification for [my] assertion that [all(?)] computer programs are technological" just shows that you do not understand the nature of software. Software is created in order to do something. Software is created to interact with a machine. Software, then - by definition - is technological. I simply need no "justification." I am right not because "I say so," I am right because of what software is.

Anonymous said...

"Software is written to do something"

And I write what I want on my keyboard.

Saying that other people wrote some patentable code is an insult to the programmer's profession.

Anonymous said...

I am sorry Anonymous @ 21:36, as I do not understand your post.

Are you saying that whatever you write on a keyboard is software?

Are you saying that you create software that in fact does not do anything and is meant to not do anything? That seems most odd.

And that is an especially odd thing to say, when the next comment seemingly takes offense against patents (as if somehow patents are by and of themselves an insult against the programmer's profession).

You do realize that it is the epitome of non-professionalism to not only imbue a religious zealotry against patents into a 'profession', but to then force the entire profession to believe in such zealotry as you do, right?

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