Monday, January 28, 2013

Brave new patent law

Men's HurdlesIt has been a few months since my colleagues and I watched the Second Reading of the New Zealand Patents Bill on the tellie. I cover this event in my post Patent Party in the House. It is now time for the New Zealand Parliament (known as the Committee of the whole House) to consider the Bill part by part.

The Bill has jumped to Number 2 on the Order Paper. The Committee stage may happen within the next few weeks. Is this really the final hurdle? Could it be that we will see patent law reform at last?

As I mentioned in A makeover for the Patents Bill there is Supplementary Order Paper (SOP) 120 tabled by the Government on 28 August 2012.

During the Select Committee process the Ministry of Economic Development (MED) prepared a Supplementary Report to the Commerce Select Committee on the issue of the patentability of computer programs. The report recommended an exclusion from patent protection for computer programs, "the wording of the exclusion being similar to, or the same as, the exclusion for computer programs contained in the EPC and the UK Patents Act."

The desire for a European-style exclusion was echoed in many of the submissions. For example, there were three written submissions from the New Zealand Open Source Society (NZOSS). The first of these submissions favoured harmonisation with Europe. The submission suggested that "New Zealand could follow the European lead in patent law, and explicitly exclude software from being patentable".

The Supplementary Order Paper introduces new clause 10A. It has a European look about it. This new clause reads as follows:
10A Computer programs
(1) A computer program is not an invention for the purposes of this Act.
(2) Subsection (1) prevents anything from being an invention for the purposes of this Act only to the extent that a patent or an application relates to a computer program as such.
The Explanatory note states that the new clause is "considered to be more consistent with New Zealand's international obligations ... [and] is also more consistent with overseas precedents and makes it clear that it is only computer programs themselves that are ineligible for patent protection.

As the Government said in a press release titled Progress towards modernising patent law, the Bill will continue to protect genuine innovations and encourage Kiwi businesses to export and grow. The changes will overhaul sixty-year old legislation and create a balanced patent system that will protect inventions and encourage innovation. The Bill will align our patent laws more closely with international best practice, and builds on initiatives that will help create a more productive and competitive economy.

The next few weeks should be interesting.

Photo courtesy of author KKfromBB under Creative Commons licence. 


  1. Thanks for the update, Matt.

    A curious little news release appeared on the IP Australia web site the other day, about the SEM patent project -

    The purpose of this release is somewhat obscure. It seems to be an update about nothing. Except, perhaps, to imply that the lack of progress has something to do with the delay in passage of the NZ Patents Bill. Which causes me to wonder, cynically, whether some pressure is being brought to bear behind the scenes.

    - Mark

  2. Sadly I don't think "as such" works in stopping computer programs (computer implemented inventions) from being patentable.

    UK law also has the "as such" yet we have a patent which has passed through.

    Halliburton won an appeal against the UKIPO,

    The judge refers to the "as such" clauses contained in in the EU and UK law but still proceeds to say that,

    "30. The difficulties in this area arise mostly in relation to inventions which involve the use of computers. All the Court of Appeal cases (from Merrill Lynch to Symbian) are about inventions implemented in software. The simple problem is that computer programs (as such) are excluded by s1(2)(c) (c.f. EPC Art 52(2)(c) and 52(3)) . Whether it was so clear in the past however, one thing is clear today. An invention which makes a contribution to the art which is technical in nature (to echo Kitchin J's words in Crawford) is patentable even if it is implemented entirely on a computer and even if the way it works is entirely as a result of a computer program operating on that computer. The outcome of the Symbian case proves that. "

    "as such" is the gateway to software being patentable.

    Symbian was about optimisation. Halliburton is a simulation of a drill bit. Neither should be patentable, but they are valid in the UK and EU.

  3. Thanks Anonymous. Readers of this blog will be familiar with the Halliburton case. I covered this in my blog post back in October 2011 titled "Halliburton Energy hits pay dirt".

    In Halliburton it was 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. Accordingly finding a better way of designing drilling bits in general is itself a technical problem.

    The predominant view here in New Zealand is that novel, non-obvious inventions should be patentable regardless of the raw materials used to implement them

    1. Predominant among which set of people?

    2. Predominant among New Zealanders.

    3. Based on what evidence can you make that assertion? It's completely at odds with my experience (as well as formal votes in various interest groups).

    4. The New Zealand public has had a few opportunities to make formal submissions on the Patents Bill. Most of these submissions are in support of the new legislation.

      There will always be a vocal minority that are philosophically opposed to various aspects of patent law and would like to see subject matter arbitrarily excluded from patent protection.

      It is now up to the Government to weigh up these competing interests.


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