Patents Bill - IPONZ Issues Examination Guidelines

As reported in the May 2010 IP Forum, the Commerce Select Committee in its revised Patents Bill excluded computer software from being patented. Subsequent to this report, on 15 July 2010, the Commerce Minister instructed IPONZ to develop guidelines to allow inventions that contains embedded software to be patented. IPONZ released its guidelines on 20 December 2010.

The Examination Guidelines: Patentability of Inventions involving Computer Programs (“the Guidelines”) note that the exclusion provided under clause 15(3A) of the Patents Bill is plain in respect of claims to computer programs per se. Its effects and implications however are less clear where there are one or more integers in a patent claim which comprise or involve the application of a computer program which may fall outside of the exception.

The Guidelines note that there is substantial similarity between the United Kingdom and New Zealand patent law which would make the UK approach to patentability of computer programs a useful starting point. The Guidelines then turn to the test set out in Aerotel Ltd v Telco Holdings Ltd & Ors Rev [2006] EWCA CRV 1371 as a means of considering whether a claimed invention falls within an excluded area. The test requires an assessment of:

1. A proper construction of the claims;
2. An identification of the actual contribution that the invention makes to the prior art;
3. Asking whether the actual contribution falls solely within the excluded subject matter; and
4. Reviewing whether the actual or alleged contribution is actually technical in nature.

The Guidelines caution against the adoption of the Aerotel test in its entirety. However they  go on to note that the above factors appear to be useful and appropriate in informing the basis of an approach to assessing whether a claim should be excluded from the patent based on the exception to computer programs provided at clause 15(3A). 

A key inquiry of the above steps is that provided at (c) regarding whether the contribution lies “solely” within the excluded area. The Guidelines note that, unlike the European Patent Convention  Article 52(3), there is no “as such” limitation in the exclusion under clause 15(3A). The Guidelines then note that for inventions that involve the use of computer programs, the following questions from CFPH LLC [2005] EWHC 1589 (Pat) at [104] can usually be asked:

1. Is the artefact or process new and non-obvious merely because there is a computer program?  If yes, then it is excluded;
2. Would the artefact or process still be new and non-obvious in principle even if the same decisions and commands were undertaken a different way?  If no, then it is excluded;
3. Is the computer program merely a tool adapted to achieve efficiency or something similar?  If yes, then it is not likely to be excluded. 

Although IPONZ’s Guidelines are helpful in providing how the Office will review patent applications which involve embedded computer programs, these guidelines in no way bind the New Zealand Court in their interpretation of clause 15(3A) when it is brought into effect.

The Guidelines are essentially a sop to try and preserve the patentability of embedded software without including such an exception in the legislation itself. Whether it works and where the boundaries are will be up to the courts to interpret – hardly a satisfactory state of affairs.