The New Zealand Patents Bill, which was introduced to New Zealand’s Parliament in July 2008, has now received its third and final reading and will shortly come into effect.
Once enacted, this legislation will replace the Patents Act 1953 and bring New Zealand patent law substantially into line with the laws of its major trading partners, including Australia. The new Act will strengthen the criteria for granting a patent in New Zealand by expanding current local novelty assessment to absolute (worldwide) novelty; introducing an inventive step and utility test at the examination stage; providing for ‘whole of contents’ considerations as part of the existing novelty test and by introducing a new support requirement in place of the existing fair basis test. The new Act will also replace the ‘benefit of the doubt’ test for the right to grant with the civil standard of ’balance of probabilities’.
The new legislation will maintain the existing exclusions to patentability including methods of diagnosis and therapeutic, surgical and diagnostic methods for treatment. However, the new Act will also introduce a new exclusion for computer-implemented inventions from patentability. It was this exclusion which caused the greatest controversy and ultimately a delay in the enactment of this new legislation. When the Patents Bill was first circulated, the computer-implemented exclusion was very general in nature and provided for a blanket ban on all software from patentability. However, following some rather lengthy debates and after further consultation with relevant shareholders, it was agreed that a workable compromise could be achieved by this exclusion being tempered somewhat to provide for limited protection where the inventive contribution rests somewhere outside a computer programme per se. The approach ultimately adopted was more or less along the lines of the current European, and in particular UK, patent laws. Following a couple of iterations of the wording for the exclusion, the New Zealand Parliament settled on the following wording for clause 10A of the Patents Bill:
- A computer program is not an invention and not a manner of manufacture for the purposes of this Act.
- Subsection (1) prevents anything from being an invention or a manner of manufacture for the purposes of this Act only to the extent that a claim in a patent or an application relates to a computer program as such.
- A claim in a patent or an application 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 Commissioner or the court (as the case may be) must, in identifying the actual contribution made by the alleged invention, consider the following:
- the substance of the claim (rather than its form and the contribution alleged by the applicant) and the actual contribution it makes:
- what problem or other issue is to be solved or addressed:
- how the relevant product or process solves or addresses the problem or other issue:
- the advantages or benefits of solving or addressing the problem or other issue in that manner:
- any other matters the Commissioner or the court thinks is relevant.
- To avoid doubt, a patent must not be granted for anything that is not an invention and not a manner of manufacture under this section.
Under the new Act a computer-implemented invention will not be deemed a patentable invention in New Zealand if the sole inventive feature is that of a computer programme. It will, however, be possible to obtain patent protection for a computer programme if the inventive 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.
These specific changes to Clause 10A of the Patents Bill will now bring the New Zealand patent legislation more closely into line with the approach adopted in Europe, in particular the United Kingdom, and therefore guidance on the nature and extent of its application should be sought from the relevant case law in the United Kingdom.
The new provisions will apply to all New Zealand applications (complete, national phase, divisional applications) filed on or after the commencement date of the new Act. At this stage it is expected that this will not be until mid to late 2014 as the Regulations that give effect to the new Act are still yet to be drafted.
Accordingly, any patent applications filed prior to the commencement of the new Act will be considered under the current 1953 Act. As the current New Zealand patent law does not explicitly exclude computer-implemented or software patents, it would be advisable to consider filing for protection of such inventions as soon as possible.