Debugging the law on software patents
Submissions received by the Ministry of Economic Development ("the Ministry") on the draft guidelines for the patentability of computer programs have criticised both the guidelines and clause 15(3A) in the Patents Bill which the guidelines are intended to interpret, namely, “a computer program is not a patentable invention”. The Patents Bill is currently awaiting its second reading in Parliament and clause 15(3A) can be removed or amended before the Bill is enacted.
Background
The addition of clause 15(3A) to the Patents Bill was recommended by the Commerce Select Committee ("the Committee") in response to submissions made by open source advocates during the review of the Bill. This may have caught some New Zealand businesses by surprise as there was a lengthy public consultation process conducted by the Ministry before the Bill was introduced into Parliament, including a review of the patentability of computer software which concluded that there were "no strong arguments" for excluding software from patent protection.
The Committee stated in its report that clause 15(3A) is not intended to prohibit ‘embedded software’ from being patented, that is, software incorporated into an article such as a dishwasher. The Committee recommended that guidelines be developed for examining patent applications for inventions involving embedded computer programs. However, the draft guidelines issued for public comment by the Ministry in December 2010 did not make any reference to embedded software. Instead, the guidelines set out a “general approach” to be taken by patent examiners and recommend the adoption of a modified version of the four step Aerotel test applied by the English Court of Appeal.
Submissions on the draft guidelines
Submissions were received from 35 parties including a range of New Zealand businesses, industry groups, Crown Research Institutes, and patent attorneys. Although the Ministry previously stated that the release of guidelines was not intended to “re-open” the debate on the patentability of computer programs, many industry submitters, including Auckland Uniservices and NZICT, called for the removal of clause 15(3A) or, at least, the amendment of the clause to make it consistent with exclusions in United Kingdom and European legislation which only exclude computer programs “as such” from patentability.
Many submissions noted the contradiction between the apparent blanket exclusion of clause 15(3A) and the intention of the Committee for embedded software to remain patentable. The concern that the guidelines would not have any weight or standing in a court was expressed by submitters such as Air New Zealand, Fisher & Paykel Appliances, GNS Science, and the NZ Institute of Plant & Food Research.
Almost all of the submissions, including those of Affinity Ltd and Internet New Zealand who supported the exclusion before the Committee, noted that the guidelines were silent on the patentability of embedded software and considered that the guidelines should attempt to define the term “embedded software” to better reflect the intention of the Committee.
The submissions made on behalf of Henry Hughes can be viewed here. The Ministry has yet to issue a response to the submissions.
Adrian Evans - June 2011
