Saturday, September 1, 2012

The embedded software conundrum

Rope Knot (_MG_5339)In the next few weeks the New Zealand Patents Bill is expected to head into a second reading in Parliament. Also on the table is a Supplementary Order Paper (SOP) setting out proposed amendments to the Bill. I comment on the contents of the SOP in an earlier post.

According to a Government press release, the SOP introduces a minor amendment to clarify whether computer programs are patentable. Under the amendment, computer programs 'as such' will not be eligible for patent protection. It was never the intention of the Commerce Select Committee to exclude all software-related inventions from patentability. The SOP better reflects the Commerce Select Committee's intention.

The Committee reported that it "received advice that our recommendation to include computer programs among the inventions that may not be patented would be unlikely to prevent the granting of patents for inventions involving embedded software".

The obvious question is why doesn't the SOP introduce the words 'embedded software' into the legislation? Most obvious questions have an obvious answer. The answer is that the term 'embedded software' if used in legislation will create uncertainty.

What the Commerce Select Committee said

The Committee's report said that it had sought advice as to whether legislation that would enable "embedded software" to be patentable might be practicable. The answer was 'no'. The report went on to state that:
'[a]fter careful consideration we concluded that developing a clear and definitive distinction between embedded and other types of software is not a simple matter; and that, for the sake of clarity, a simple approach would be best'.
As mentioned above, the Committee noted it had received advice that excluding computer programs would not affect the patentability of inventions involving embedded software. That advice was to introduce a European style exclusion.

What the officials said

The Ministry of Economic Development (now part of MBIE) prepared an October Report. The advice to the Committee was that if the "Committee feels that it is essential to maintain the patentability of embedded software in New Zealand, it may be best to maintain the status quo". In this case the Patents Bill "should not contain any explicit provisions regarding the patentability of computer software".

For reasons known only to the Committee, it asked for a further briefing on the issue of the patentability of computer programs. This resulted in a Supplementary Report, the January Report. This report looked at two possible approaches to the patentability of computer-related inventions. These were:
(a) allow patents on embedded software and exclude all other software; or
(b) exclude computer programs from patent protection.
Option (a) was not the MED preferred option. The main reasons against an 'embedded software' definition in the legislation were:

  • there is no simple definition of "embedded" software that could be incorporated into the Bill;
  • technical advances may mean that any definition fixed in legislation becomes obsolete fairly quickly;
  • no other country has attempted to make the distinction between "embedded" and "non-embedded" computer programs in patent legislation;
  • IPONZ and the New Zealand courts would have to develop their own practice from scratch with decisions from other jurisdictions providing little guidance;
  • there would be considerable uncertainty for both IPONZ and patent applicants.

Option (b) in the January 2010 report suggested an exclusion from patent protection for computer programs, "the wording of the exclusion being similar to, or the same as, the exclusion for computer programs contained in the EPC and the UK Patents Act." The MED report stated that "IPONZ has indicated that if such an exclusion was provided, it would use EPO and UK case law and practice to interpret the exclusion".

It is clear from the October Report and the January Report that MED's preferred approach is to have no specific exclusion for computer programs. If however there has to be an exlusion, a European style exclusion is the preferred option. Trying to include "embedded software" in legislation is not a preferred option.

What the submitters said

The MED's views echo the views of the most vocal submitters. For example, the submission process attracted 3 written submissions from the NZ Open Source Society. The first submission (21) favoured harmonisation with Europe. The second (21A) tabled an academic paper. The third (21B) was made well after submissions closed.

The third submission was sent to only two members of the Commerce Select Committee. Ironically, it criticised what it saw as multiple submissions made by others, named other submitters as liars, criticised the practice of addressing issues raised by other submitters, and asked that its third submission be taken into account "in the interests of completeness and fairness".

Putting aside the hypocritical and slightly rabid tone of the third submission, the author does express concerns about the term 'embedded software' and states that:
'... the idea that software embedded with hardware is somehow different from other forms of software does not bear scrutiny. Traditionally "embedded" software is simply code that rather than sitting on a magnetic disk drive is stored on a Read Only Memory (ROM) device or an Erasable/Programmable ROM (EPROM). These devices are exactly the same as USB memory sticks of today or the replacement for magnetic disk drives - solid state drives'.
What happens now?

I think the amendment introduced by the Supplementary Order Paper aligns the legislation with the Commerce Select Committee's intention. Introducing 'embedded software' into the Patents Bill is likely to create the uncertainty already highlighted by the Commerce Select Committee, their advisors, and the most vocal of those who made submissions on the Bill.

Photo courtesy of author Ed Townend under Creative Commons licence.


  1. Hi Matt,

    I have written a reply to this post here:


  2. It's always nice to read your blog Matt, since you take the trouble to actually read the source material, rather than the huge amount of rhetoric circulating on this issue.

    I agree the SOP amendment clarifies what I have always described as a law suit waiting to happen in the Select Committee draft amendments, and the alignment with the European wording is greatly to be preferred. It was never fair to expect IPONZ to have to try to remedy the poor drafting through a Practice Guideline, and regardless of the relative merits of the Select Committee's decision, that decision does now appear to be better reflected in the Bill.

  3. I guess what should matter is how we can keep these softwares done. I don't see any reason for software patent, it can be accessed easier anyway. Everyone is accountable for copying, but one suggestion: do something better about it.


Related Posts Plugin for WordPress, Blogger...