New Zealand's long gestating Patents Bill has been amended to clarify the patentability of computer programs.
The Bill was introduced in July 2008 and was referred to the Commerce Committee in May 2009. The Commerce Committee recommended that the Bill specifically exclude computer programs from patentable inventions. A Supplementary Order Paper released in August 2012 amended the Bill to include a provision that a computer program was not a patentable invention "only to the extent that a patent or an application relates to a computer program as such." Due to some confusion around the meaning of the wording and following consultation with the software and ICT sector, Commerce Minister Craig Foss recently released another Supplementary Order Paper further amending the wording of the Bill.
A general exclusion of computer programs from patentability has been kept in the amendment, but the wording has been replaced with a new clause 10A. In summary, clause 10A provides that:
- A computer program is not an invention nor a manner of manufacture, only to the extent that a claim relates to a computer program as such;
- A claim relates to a computer program as such if the actual contribution made by the alleged invention lies solely in it being a computer program; and
- In examining a claim in a patent application that may include a computer program, the Commissioner of Patents must consider the contribution made by the computer program, the type of problem or issue that is solved or addressed, and other relevant factors.
This means that a computer program will not be a patentable invention if the sole inventive feature is that it is a computer program. It will, though, be possible to obtain a patent for a computer program if the invention's contribution lies outside of the computer, or if the contribution affects the computer itself but is not dependent on the type of data being processed or the particular application being used.
Two examples of alleged inventions are given in the new clause 10A. In the first, a claim for a better method of washing clothes is implemented by a computer program in a washing machine. As the contribution to the method of washing the clothes does not lie solely in the computer program, the claim would involve a patentable invention. In the second, a claim for generating documents involves a computer asking questions and processing information to produce the documents. As the contribution lies solely in the computer program, it would not be an invention under clause 10A.
These amendments align the Bill more closely with the approach in the United Kingdom. Guidance on the application of clause 10A should therefore be able to be sought from United Kingdom case law.
However, clause 10A is narrower than the approach to patentability of computer programs taken in Australia. This conflicts with the New Zealand government's intention to more closely harmonise intellectual property and business laws with Australia.
The Bill is (currently) expected to be passed and come into force in 2013. We look forward to receiving further guidance from the Intellectual Property Office of New Zealand and the Courts on the interpretation and operation of the new clause 10A.