Monday, September 15, 2014

Signposts for software patents

pay heed The New Zealand Patents Act 2013 came into force today. Less than a week before the General Election I wasn't expecting a lot of fanfare. But there has been a lot of work done getting ready.

As the Patents Bill worked its way through the legislative process, one of the hotly debated topics was the extent to which patent protection should be available for computer-implemented inventions. These are also referred to as software patents.

So the new law is in place. What now? As I said in New Zealand bans patents for software, it's a little unclear. Have we banned software patents? Or have we banned patents for software? There is a difference.

The old law

Patent applications filed up to and including Friday 12 September will be assessed under the Patents Act 1953 (the old act). Future divisional applications and continuations, filed from those applications, will also be assessed under the old act.

The old act defines an invention as any 'manner of new manufacture'. What is patentable subject matter and what is not patentable subject matter is defined by case law and decisions of the Commissioner of Patents.

The new law

IPONZ will now look more closely at 'any claimed invention that involves or is implemented by a program running on some sort of computer'. It says so in the Patent Examination Manual published today.

Patent applications subject to the Patents Act 2013 (the new act) will still have to satisfy the 'manner of new manufacture' test. There will also be a test applied to determine whether a patent claim relates to a computer program as such. This will occur if the actual contribution made by the alleged invention lies solely in it being a computer program.

Is the contribution a computer program as such?

The Minister responsible for the new legislation gave a clear direction to the Commissioner of Patents and the New Zealand courts to apply the steps of the Aerotel test established by the English Court of Appeal. The Minister intends New Zealand practice to follow the Aerotel test, and subsequent English jurisprudence that applies the test, when considering patent applications involving computer programs.

The Patent Examination Manual refers to five 'signposts' that would indicate patentable subject matter. These five signposts were formulated in AT&T Knowledge Ventures LP, Re [2009] EWHC 343 (Pat) as:
  1. whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
  2. whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
  3. whether the claimed technical effect results in the computer being made to operate in a new way;
  4. whether there is an increase in the speed or reliability of the computer;
  5. whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

These signposts represent 'easy wins'. If a claimed invention satisfies one of these tests then it is likely to be eligible for patent protection under the new law. So we are now a little clearer as to how IPONZ is going to handle these types of inventions. What will help a lot is some assistance from the Courts.

Photo courtesy of author Tom under Creative Commons licence.

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