It all comes out in the wash: New Zealand grapples with computer programs "as such"

Patenting computer programs:
getting round the "as such"
limitation can be child's-play
for skilled professionals ...

Computer programs "as such" not to be inventions in New Zealand? A katpat goes to Earl Grey, Sarah Chapman and Raymond Scott of Antipodean law firm Simpson Grierson for the news that the "as such" exclusion of computer programs from being inventions (and therefore from patentable) in Europe is likely to be exported to that far-off land of regular-sized sheep and outsized rugby players. According to that firm's media release, clause 10A of the much-amended Patents Bill provides that:

A computer program is not an invention nor a manner of manufacture, only to the extent that a claim relates to a computer program as such;

A claim relates to a computer program as such if the actual contribution made by the alleged invention lies solely in it being a computer program [which is what this Kat thought the words "as such" meant when the European Patent Convention came into force and before the European Patent Office (EPO)'s Boards of Appeals, among others, decided to interpret them ...]; and

In examining a claim in a patent application that may include a computer program, the Commissioner of Patents must consider the contribution made by the computer program, the type of problem or issue that is solved or addressed, and other relevant factors [Goodness! What is a "relevant factor" and to what is it relevant? This provision is surely ripe for litigation, says Merpel].

This means that a computer program will not be a patentable invention if the sole inventive feature is that it is a computer program, explain Simpson Grierson. It will, though, be possible to obtain a patent for a computer program if the invention's contribution lies outside of the computer, or if the contribution affects the computer itself but is not dependent on the type of data being processed or the particular application being used. The media release continues:

It was a great washing
machine -- but Arthur never
did find his missing sock

Two examples of alleged inventions are given in the new clause 10A. In the first, a claim for a better method of washing clothes is implemented by a computer program in a washing machine. As the contribution to the method of washing the clothes does not lie solely in the computer program, the claim would involve a patentable invention. In the second, a claim for generating documents involves a computer asking questions and processing information to produce the documents. As the contribution lies solely in the computer program, it would not be an invention under clause 10A [It would be churlish to argue with an example that reflects legislative intention, but this Kat knows more than one patent attorney who would be quite capable of finding a way or two of expressing this as lying outside the "as such" provision.  Adds Merpel, isn't the real problem here one of presentation of information -- and can it really be said that a computer program which achieves another aim that falls beyond the scope of being an invention is therefore caught by the "as such" proviso?].

These amendments align the Bill more closely with the approach in the United Kingdom. Guidance on the application of clause 10A should therefore be able to be sought from United Kingdom case law [which itself has been known to change from time to time, and which is in any event now developing with an eye to consistency with rulings of the EPO and other national courts in Europe].

However, clause 10A is narrower than the approach to patentability of computer programs taken in Australia. This conflicts with the New Zealand government's intention to more closely harmonise intellectual property and business laws with Australia [But why would they want to do this, wonders Merpel. Wouldn't they get a competitive advantage if they gave patents to inventions that weren't patentable in Australia ...?].

When will all of this become law? Says the media release, the Bill is (currently) expected to be passed and come into force in 2013. You have been warned.