The new Patents Act has finally been passed, completing the first reform of New Zealand’s patent law in 60 years.
We run through the main changes – dealing first, and in detail, with the tricky question of computer program patents.
A brief history
The previous Act was passed in 1953 and was long out of date. Government officials and the local IP community started talking about reform options in the 1980s. Those discussions culminated in a 2008 Patents Bill.
On one side was the Free and Open Source Software (FOSS) movement which wanted computer software banned from the patents regime. On the other were local inventors like Fisher & Paykel who rely on patents to justify their investment in computer-implemented inventions.
In May this year, Commerce Minister Craig Foss ended the stand-off by introducing Supplementary Order Paper 237, the text of which appears as section 10A of the Patents Act.
What does section 10A mean for software patents?
When section 10A first emerged in SOP 237 it attracted headlines like “Software not subject to Patents Bill”1. But section 10A of the Patents Act does not ban “software patents”.
Computer-implemented inventions will continue to be patentable in New Zealand where the invention as a whole has practical or technical application. The Act gives the following example:
A process that may be an invention.
A claim in an application provides for a better method of washing clothes when using an existing washing machine. That method is implemented through a computer program on a computer chip that is inserted into the washing machine. The computer program controls the operation of the washing machine. The washing machine is not materially altered in any way to perform the invention. The Commissioner considers that the actual contribution is a new and improved way of operating a washing machine that gets clothes cleaner and uses less electricity. While the only thing that is different about the washing machine is the computer program, the actual contribution lies in the way in which the washing machine works (rather than in the computer program per se). The computer program is only the way in which that new method, with its resulting contribution, is implemented. The actual contribution does not lie solely in it being a computer program. Accordingly, the claim involves an invention that may be patented (namely, the washing machine when using the new method of washing clothes).
Section 10A in practice
- implemented entirely on a computer
- even if the way the invention works is entirely as a result of a computer program operating on that computer.2
- computer program implemented methods of pre-paying telephone calls4
- methods of accessing files in a dynamic link library which make a computer operate faster and more reliably5
- a computer-implemented method of designing a drill bit6
- a system for monitoring electronic communications which caused text messages or emails to be sent outside the system in specific circumstances7,
- human beings, and biological processes for their generation
- methods of medical treatment of human beings by surgery or therapy
- a method of diagnosis practised on human beings
- plant varieties, and
- inventions the commercial exploitation of which would be contrary to public order or morality.
- file “assertions” on novelty and inventive step, and
- seek “re-examination” of a patent both after acceptance but before the patent is granted and also after grant.