Thursday, August 4, 2011

The October report

Following my earlier blog post on the Court Report it seems appropriate to review some of the background to the issue of the patentability of computer implemented inventions in New Zealand.

The Parliamentary Commerce Select Committee issued its report on the Patents Bill on 30 March 2010.  The report contains recommended changes to the Bill.  The Patents Bill must now pass through second and third readings in Parliament.  Further changes could still be made to the Bill before it becomes law.

The Committee recommends an amendment to exclude computer program inventions from patent protection.  Proposed clause 15(3A) simply states “A computer program is not a patentable invention”.  The Committee said it was “aware of New Zealand companies who have invested in a significant number of software-related inventions, involving embedded software”.

In its report the Committee states that it "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".

MED released a report of advice for the Select Committee in October 2009.  The October Report records that the Committee wanted to restrict the "patentability of computer software while maintaining the patentability of so-called 'embedded software'" (para 26).

MED set out three options for the Committee. These are:
(a) exclude all software from patent protection;
(b) leave things as they are; or
(c) adopt a hybrid UK/EPO approach.

The MED recommendations in the report are clear.

Option C was not the recommended approach. It is described in the report as far from ideal (para 57) and difficult to implement (para 59).

The MED suggested the best approach was to either (a) exclude all software from patent protection, or (b) leave things as they are. (para 53).

The MED document goes on to state that a blanket exclusion (Option A) would be relatively easy for the Intellectual Property Office of New Zealand (IPONZ) to implement and would leave no doubt as to what was intended (para 53). However, a blanket exclusion for computer programs would also exclude "embedded" software from patent protection in New Zealand (para 54).

It was then over to the Committee. The MED advice states that if the "Committee feels that it is essential to maintain the patentability of embedded software in New Zealand, it may be best to maintain the status quo" (para 54). This is Option B.  In this case the Patents Bill "should not contain any explicit provisions regarding the patentability of computer software" (para 60).

If the Committee indeed received advice that excluding computer programs from patent protection would still allow the granting of patents for embedded software, then the October Report is not it.

The recommended approach, if the Committee wanted to restrict the "patentability of computer software while maintaining the patentability of so-called 'embedded software'", was Option B.  Leave things as they are.  No explicit provisions regarding the patentability of computer software.

This would not mean opening the floodgates.  It would simply mean continuing to apply the existing clear set of guidelines as to what is patentable subject matter and what is not.  The patentability of software in New Zealand has evolved over the last two decades through interpretation of the concept of "manner of manufacture" by Courts and Patent Offices in both New Zealand and Australia.

For reasons known only to the Committee it did not follow the advice of the October Report.  It asked for further advice from the MED.  Why did it do this?  Was the advice wrong?

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