On 28 August 2013, the Patents Bill finally completed its passage through the New Zealand Parliament, passing its third and final reading. Once in force, the new Patents Act (the new Act) will replace the Patents Act 1953 (the current Act), and will tighten the criteria for the patentability of computer programs. Widespread media reports that the new Act “bans software patents” altogether are some what misleading; it is apparent that computer programs will in many instances continue to be patentable under the new Act.
Importantly, patents for computer programs that have been granted under the current Act will continue to be valid and enforceable for up to 20 years from the date of filing. In addition, pending applications which are filed before the new provisions come into force will be examined and granted under the provisions of the current Act.
Relevant Provisions under the New Act.
Under the new Act, a “computer program is not an invention and not a manner of manufacture for the purposes of [the] Act” but 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.” To identify the “actual contribution made by the alleged invention” the Commissioner or court is required to consider:
a. the substance of the claim and the actual contribution it makes;
b. what problem or issue is to be solved or addressed;
c. how the relevant product or process solves or addresses the problem;
d. the benefits of solving or addressing the problem or issue in that manner;
e. any other matters the Commissioner or court thinks relevant.
The “as such” wording was borrowed from the European Patent Convention and the United Kingdom Patents At 19771, and the provisions dealing with how the contribution made by the alleged invention is to be identified were intended to codify a test set out in a decision of the United Kingdom Court of Appeal, known as the Aerotel test.2 The New Zealand Parliament clearly intended that “the Commissioner of Patents and the New Zealand courts should apply the Aerotel test and subsequent English jurisprudence that applies the test, when considering patent applications involving computer programs.3 The new provisions include an explanatory note which provides examples of computer programs that may meet the new criteria for patentability:
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).
The new Act also includes the following as an example of a computer program which Parliament envisaged would not be regarded as an invention for the purposes of the Act:
A process that is not an invention
An inventor has developed a process for automatically completing the legal documents necessary to register an entity. The claimed process involves a computer asking questions of a user. The answers are stored in a database and the information is processed using a computer program to produce the required legal documents, which are then sent to the user. The hardware used is conventional. The only novel aspect is the computer program.
The Commissioner considers that the actual contribution of the claim lies solely in it being a computer program. The mere execution of a method within a computer does not allow the method to be patented. Accordingly, the process is not an invention for the purposes of the Act.
Computer programs are still patentable under the New Act.
It is clear that computer programs in many instances will continue to be patentable under the new Act. Indeed, if the New Zealand courts do follow the decisions of the United Kingdom courts in interpreting the provisions, the exclusion of computer programs from patentability will be limited. Recent United Kingdom case law suggests that once a computer program results in a physical effect, or results in a beneficial result outside the computer itself, patentable subject matter requirements may be met.4 Examples include methods of designing drill bits5 and monitoring the content of electronic communications.6 In Symbian Ltd v Comptroller General of Patents7, for example, the United Kingdom Court of Appeal, while applying the Aerotel test, accepted that a claim to a software invention which made other software run more quickly is potentially patentable, and is not to be rejected as being directed to "a computer program as such".
The provisions of the new Act also appear to move the New Zealand requirements for patentable subject matter somewhat away from the relatively flexible approach of Australian patent law. This state of affairs is somewhat contrary to the general policy intentions of the Australian and New Zealand governments, who are looking to streamline the patent process for both countries.8
The boundaries of the exclusion of computer programs from patent protection under the new Act will undoubtedly be tested in the New Zealand courts in due course. The extent to which the New Zealand courts will follow the approach of the United Kingdom courts and/or the explanatory note in the new Act remains to be seen.
1Parliamentary Debates (Hansard) Tuesday, 27 August 2013, Patents Bill, Third Reading, Hon Craig Foss (Minister of Commerce), 12977.
2Aerotel v Telco and Macrossan’s Application  EWCA Civ 1371 (Aerotel/Macrossen).
3Parliamentary Debates (Hansard) Tuesday, 27 August 2013, Patents Bill, Third Reading, Hon Craig Foss (Minister of Commerce), 12977.
4Re Protecting Kids the World Over (PKTWO) Ltd  EWHC 2720.
5Re Halliburton Energy Services Inc  EWHC 2508.
6Re Protecting Kids the World Over (PKTWO) Ltd  EWHC 2720.
7Symbian Limited v. Comptroller General of Patents  EWCA Civ 1066, UK Court of Appeal (Lord Neuberger, Jacob and Maurice Kay L.JJ.,) 8 October 2008.
8The Hon Kim Carr “Streamlined Process for Trans-Tasman Patents’ (5 July 2011); available here.