This article is the first of a two-part series on the state of software patents in New Zealand and Australia. We begin by examining the guidelines and current practice of software patentability in New Zealand, and comparing this with other major jurisdictions including Europe and the United States.
In most jurisdictions worldwide there is debate over the extent to which patents should be allowed for computer implemented inventions. This has occurred because patent applications targeted towards computers and computer programs allow inventions, previously considered unpatentable to, arguably, become patentable.
This article is the first of a two-part series on the state of software patents in New Zealand and Australia. In this series, we explore which computer implemented technologies can be protected in both New Zealand and Australia, while addressing the patentability of some new exciting technologies and what this means to those operating in these hi-tech fields.
We begin the first part of this series by examining the guidelines and current practice of software patentability in New Zealand, and compare this with other major jurisdictions including Europe and the United States. In our second article, we will consider these same topics in Australia.
New Zealand - software patentability in the past
Under the New Zealand Patents Act 1953 (referred to herein as Patents Act 1953), obtaining patent protection for a wide range of inventions involving computer programs was permissible in New Zealand, including those relating to business methods and computer software.
However, New Zealand’s patent legislation underwent a considerable refresh in 2013 and the now in force New Zealand Patents Act 2013 (referred to herein as Patents Act 2013) explicitly restricts patent protection for some inventions involving computer programs.
New Zealand - software patentability now
Under the Patents Act 2013 an invention is not excluded from patentability simply because it is implemented by a computer program. However, if the computer program is implemented on a general purpose computer (i.e. not for a specific device) there may be some difficulty obtaining patent protection for that invention.
This is because section 11 of the Patents Act 2013 sets out that a computer program ‘as such’ cannot be an invention. In effect this section introduces a requirement that in order to be patentable, an invention must generally be more than the implementation of an idea from a non-technical field as a computer program, on known computer hardware.
By way of example the Patents Act 2013 suggests a patentable invention that involves a computer program:
An improved method of washing clothes when using an existing washing machine, the method being implemented through a computer program on a computer chip that is inserted into the washing machine.
The above example is considered a patentable invention because the actual contribution lies in the new and improved way that the washing machine works (rather than in the computer program per se).
The Patents Act 2013 provides a second example that would not be considered an invention:
A process for automatically completing legal documents necessary to register an entity, the process involving a computer asking questions of a user, storing answers in a database, processing information using a computer program to produce required legal documents, which are then sent to the user.
This example is not considered a patentable invention because the only novel aspect is completing known steps, which would have previously been completed by a person, on conventional computer hardware.
Exclusions from patentability
There are a number of possible inventions which sit somewhere between the two examples given above and it can be difficult to identify whether an invention falls within the exclusion to computer programs in New Zealand.
The wording of the exclusion in the Patents Act 2013 was adapted from the United Kingdom Patents Act 1977. Therefore the best guidance for whether a computer program invention is patentable under the Patents Act 2013 may be provided by the United Kingdom precedent. The Intellectual Property Office of New Zealand (IPONZ) Patent Examination Guidance Manual relating to computer programs borrows heavily from UK precedents.
The term ‘as such’ used in section 11 is understood to narrow the exclusion. This allows inventions which may be implemented in a computer program but where the invention is not the computer program itself. The UK test for ‘as such’ requires:
- identifying the actual contribution of the invention (i.e. what has the invention added to human knowledge) and then,
- asking whether the actual contribution falls solely within the excluded subject matter (i.e. is the addition only the use of a computer program).
Further details on excluded and allowed subject matter can be found in the IPONZ Examiner’s Manual relating to section 11: “Computer programs”.
Guidelines / signposts for software patentability
IPONZ has identified five signposts (adapted from AT&T Knowledge Ventures v Comptroller General of Patents, England and Wales High Court Decisions 343 (Pat)) that may help in a determination of whether an invention is a computer program as such. The signposts attempt to distinguish an invention which is patentable because it does more than simply implement an idea as a computer program.
The signposts are:
- whether the computer program, when run, has an effect on a process which is carried on outside the computer;
- whether the program, when run, operates at the level of the architecture of the computer; that is to say whether the effect produced by the program is produced irrespective of the data being processed or the applications being run;
- whether the program, when run, results in the computer being made to operate in a new way;
- whether the program, when run, makes the computer a better computer in the sense of running more efficiently and effectively as a computer;
- whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
If any of the above questions are answered in the affirmative, this points towards a computer program being patentable. Therefore, these signposts can be a useful guide when considering options for protecting technology which is implemented as computer program.
The washing machine example discussed above affirms the first signpost because the effect of the computer program is carried out in the washing machine (outside the program).The first signpost suggests that an invention including the use of a computer program on a particular device or process (such as a washing machine) should avoid the computer program exclusion where the product or process is in a field of technology which is patentable. Inventions should also be patentable when they address problems relating to a computer itself or result in a more efficient or effective operation of a computer.
Another good example is the recently granted New Zealand Patent 702006 for a method and system to analyse interference susceptibility of a radio receiver design. The claimed software method allows for the prediction, analysis or simulation of the interference susceptibility of a radio receiver at a design stage, even before any hardware is actually manufactured.The output of the software implementation is a graph that depicts the transmit power level of the radio which results in the performance degradation. Considering the substance of the claim and the actual contribution it makes to the radio receiver design, this invention was held patentable by IPONZ. This is because the software implementation in this case, enables receiver performance to be assessed without requiring the actual receiver to be built. This means that receivers can be designed and modified without the time and expense of building the hardware previously considered necessary for this assessment, thereby affirming the first sign post.
Comparison to the United States practice
The software patent eligibility approach followed by the United States Patent and Trademark Office (USPTO) appears very similar to that of IPONZ, although there are a few fundamental differences which are highlighted below:
- U.S. examiners first determine whether the claimed invention is directed to an “abstract idea”.
- The second step is to assess whether the claim, on the whole, amounts to “significantly more” than the abstract idea. “Significantly more” in this context means that the claimed feature is part of the inventive concept.
Therefore, it is not enough to simply say that the invention is a generic computer implementation but instead, the computer implemented feature needs to contribute to the inventive concept of the invention.
For example, software that provides real-time traffic updates would be considered an “abstract idea”. However, if the same software can intelligently download the traffic data when the device is online, and store the data for an off-line use, with the capability of sending alerts to a user via text notifications and links to access the maps, this would be significantly more than the “abstract idea” and is patentable, provided the other requirements for novelty and non-obviousness are met.
Comparison to the European practice
Similar to the USPTO, the European Patent Office (EPO) also adopts a two-stage test in assessing whether a software implemented invention is patentable:
- The first test carried out by the EPO is to assess whether the claim involves a “technical” feature which aims to solve a technical problem. In general, this test is satisfied if the claim describes any hardware aspects, e.g. a computer, computer network, server, or any tangible technical element.
- The second and more difficult test is to assess whether the technical feature(s) in the claim would be non-obvious to a skilled person in light of the technical problem to be solved.
The above approach by the EPO suggests that, in order to successfully patent a software invention, it is necessary to demonstrate that the “technical” features of the claimed invention involve an inventive-step. That is to say that the claimed technical features would be non-obvious to a skilled person at the time of invention.
By way of example, consider a computer implemented method for trading stocks between traders in a computer network, the method comprising an encryption standard to provide secure communications and trading options between the traders. The above claim construction is considered patentable by the EPO, because it clearly demonstrates that the claimed method involves technical features originating from the computer implementation of the method. Furthermore, given that the encryption is a technical feature, the detail of the data encryption can legitimately contribute towards the inventive step of the software method.
Points to note
In a nutshell, for a computer program to pass the patent eligibility threshold, it is imperative that the application describes the overall architecture of the system which performs the desired function. Merely reciting the process in a way that is disassociated from the overall architecture will not satisfy this threshold. Therefore, substantial focus should be placed on the hardware and how the said hardware will be interconnected to the software.
Our recent experiences based on the examination reports issued under the Patents Act 2013, suggests that IPONZ is applying a European style ‘technical contribution’ approach to patentability, albeit in a less structured manner than is the case before the U.K. Patent Office or the EPO. Consequently, in order to successfully patent an invention devised in a software context, it may be necessary to demonstrate that the claimed invention operates faster / more accurately / uses less resources / provides enhanced functionality / is more compatible / is platform independent / and so on.
It is apparent that there are a number of areas in which computer programs remain patentable inventions in New Zealand. However, the Patents Act 2013 has increased the difficulty of obtaining broad protection for some computer implemented technologies. It appears that it will be difficult to use computer program implementations (or computer implemented inventions) to obtain patent protection for ideas which are not tied to a particular apparatus or device(s) that contribute in a patentable field of technology.
In light of these developments, tech start-ups and independent inventors in the software domain should think critically about whether their inventions will pass at least one of the “signposts” identified above and should also prepare themselves for more stringent requirements from IPONZ on software patents.