In response to concerns from local ICT industry sources that the currently worded Patents Bill would have allowed software to be patentable and hindered innovation, a new supplementary protection order (SOP) has been issued here. The Patents Bill uses the old English law concept of an invention being a new manner of manufacture, and provides for limited exclusions to patentability including in certain biological fields. However the newly proposed clause 10A specifically excludes computer programs from the definition of an invention, but retains the “as such” wording familiar from European jurisprudence. In particular an invention is excluded only to the extent that a claim relates to a computer program as such. While this had been present in the previous version, the latest draft of the legislation newly clarifies that 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. The actual contribution is considered by looking at the substance of the claim and considering what problems are addressed or what benefits result. Two examples are provided which pass and fail the new test – a washing machine controlled by a computer program implementing a new washing cycle and computerisation of a known business method.
Whilst the draft exclusion is superficially similar to the test devised in the UK’s Court of Appeal decision in Aerotel v Telco and Macrossan’s application, there is in fact no mention of a technical requirement in the Bill (and the only relevant exclusion is a computer program). However even if the NZ Courts do eventually interpret the exclusion in a manner similar to the UK Courts, given that the UK Courts have allowed patents for a computer programmed to operate more efficiently (Symbian) and most recently an improved method of handling multitouch events on a Smartphone type device (Apple), it may be that this clause will not have such a significant impact.
There will be uncertainty around these issues and whether the UK approach is to be adopted until clarified by the NZ Courts. However, since the difference in wording from that used in the UK was intended to broaden the exclusion compared to that in the UK in response to arguments that the “as such” wording on its own allows for the exclusion to be easily avoided, it may well be that some software inventions which are currently allowed will become unpatentable.
Furthermore, in the absence of any technical requirement, there is also a question around whether novel business methods may be patentable, these not being specifically excluded. It remains to be seen whether the NZ Courts will take a hard line on this.
It is however hoped that this SOP will enable progress on enacting the Patents Bill into New Zealand law.