New Zealand ushers in new patent era

The New Zealand Patents Bill passed its third reading in Parliament on August 28th, bringing national legislation more in line with international norms.

The bill replaces the New Zealand Patents Act of 1953, and introduces a series of measures that will bring the law more in line with UK standards. The bars to patents will be higher, as examiners may now reject applications that are found to be obvious.

Commerce minister Craig Foss said the update marks a “significant step towards driving innovation in New Zealand,” and “introduces a patent system suited for the 21st century.”

“By clarifying the definition of what can be patented, we are giving New Zealand businesses more flexibility to adapt and improve existing inventions, while continuing to protect genuine innovations,” he continued.

The bill introduces a Maori Advisory Committee to advise the Commissioner of Patents about protecting inventions relating to traditional Maori knowledge, plants and animals, as well as exclusions on patents covering plant varieties, human beings and biological processes, and computer programmes “as such”.

Many media outlets have reported the changes to the bill as an outright ban on patenting software, however a spokesperson for New Zealand’s Ministry of Business, Innovation and Employment told WIPR this is not necessarily the case.

While computer programmes themselves may not be patented under the new Patent Act, inventions that use computer programmes to control devices or processes external to the computer may be patent protected, he said.

Christopher Young, a partner at Minter Ellison Rudd Watts in Auckland, said that the update was “long overdue”, and that the matter of whether computer software should be patentable has been the subject of much debate.

He further clarified the patent eligibility of computer programmes and software: “A claim relates to a computer programme as such if the actual contribution made by the alleged invention lies solely in it being a computer programme.

“This means that, provided the other patentability criteria are met, computer programmes will still be patentable if the computer programme is a means of implementing a contribution, rather than being the contribution itself,” he explains.

In his  Foss Patents blog, Florian Mueller said that “some of language in the bill may open up some loopholes.”

Young said that as with any new case of legislation, there will be uncertainty about how the new act will be applied in practice, and that the very subject matter of the Patents Act suggests it will never exhaustively cover every possible invention.

There may be inventions where is it unclear whether the invention is a “computer programme as such” though over time case law will set parameters that will help clarify what is patentable and what is not, he added.

Matt Adams, a partner at AJ Park in Wellington, said that the new patents bill sets a higher bar, and that examination under the new regime is expected to be a lot tougher.

“Minister Foss has given 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,” he said.

The Aerotel test is used to decide whether a patent application relates to a matter excluded from patent protection and considers the contribution to human knowledge the patent applicant has made.

Adams said since 1953, there has not been a single court case to enforce a New Zealand computer implemented invention.

“In the absence of any New Zealand jurisprudence in this field of patent law, the ability to refer to United Kingdom case law will certainly be of assistance,” he continued.

On the media reaction to the bill amendments, he said: “When the government announced the current language of the bill, the accompanying press release called it a clarification of the law. One opposition party called it a humiliating back down. Others saw it as unequivocally ruling out software patents in New Zealand.

“It is hard to see how the current wording can be all of those things at the same time. Not all expectations are going to be met.”