(Aug. 30, 2013) On August 28, 2013, the New Zealand Parliament passed the Patents Bill with a vote of 117 in favor to four against. (Randal Jackson, Patents Bill Passes into Law, COMPUTERWORLD (Aug. 29, 2013).) The legislation, which was first introduced in 2008, replaces the Patents Act 1953 and seeks to “update the New Zealand patent regime to ensure that it continues to provide an appropriate balance between providing adequate incentives for innovation and technology transfer while ensuring that the interests of the public and the interests of Maori in their traditional knowledge are protected.” (Patents Bill, New Zealand Parliament website (last visited Aug. 29, 2013).)
A key aspect of the legislation that has been widely discussed is the effective removal of the ability to patent software in New Zealand. A provision excluding computer programs from being patentable inventions was recommended by the Commerce Committee in 2010, after it received a number of submissions on the issue. (Patents Bill 2008 (235-2), cl 15(3A), NEW ZEALAND LEGISLATION (last visited Aug. 29, 2013).) Further action on the legislation was then delayed while discussions were held with the software and IT sector and wording was developed to clarify the scope of the exclusion. (Press Release, Hon. Craig Foss, Progress Towards Modernising Patent Law (Aug. 28, 2012), BEEHIVE.GOVT. NZ.)
In August 2012, the Minister responsible for the Patents Bill, Hon. Craig Foss, introduced a supplementary order paper (SOP) that would remove the Committee’s recommended clause and insert a new clause 10A, which stated:
(1) A computer program is not an invention for the purposes of this Act.
(2) Subsection (1) prevents anything from being an invention for the purposes of this Act only to the extent that a patent or an application relates to a computer program as such. (SOP 2012 (120), Patents Bill 2008 (235-2).)
In May 2013, following expressions of concern from the IT industry that the above provision was too vague, the Minister introduced another SOP to clarify the “as such” wording that had been included in the August 2012 SOP. (Press Release, Hon. Craig Foss, Minister Supports NZ Software Innovation (May 9, 2013); Stephen Bell, Patents Bill Amended to Clarify Software Issue, COMPUTERWORLD (May 8, 2013).)The May 2013 SOP inserted a revised and expanded new clause 10A into the bill, which reads:
10A Computer programs
(1) A computer program is not an invention and not a manner of manufacture for the purposes of this Act.
(2) Subsection (1) prevents anything from being an invention or a manner of manufacture for the purposes of this Act only to the extent that a claim in a patent or an application relates to a computer program as such.
(3) A claim in a patent or an application relates to a computer program as such if the actual contribution made by the alleged invention lies solely in it being a computer program.
(4) The Commissioner or the court (as the case may be) must, in identifying the actual contribution made by the alleged invention, consider the following:
(a) the substance of the claim (rather than its form and the contribution alleged by the applicant) and the actual contribution it makes:
(b) what problem or other issue is to be solved or addressed:
(c) how the relevant product or process solves or addresses the problem or other issue:
(d) the advantages or benefits of solving or addressing the problem or other issue in that manner:
(e) any other matters the Commissioner or the court thinks relevant.
(5) To avoid doubt, a patent must not be granted for anything that is not an invention and not a manner of manufacture under this section. (SOP 2013 (237), Patents Bill 2008 (235-2) ).)
This provision also includes examples of processes that may or may not be an invention. (Id.)
The Institute of IT Professionals, which had lobbied strongly for the exclusion of software patents, welcomed the passage of the “historic legislation,” with chief executive Paul Matthews saying that “[t]he patents system doesn’t work for software, because it is almost impossible for genuine technology companies to create new software without breaching some of the hundreds of thousands of software patents that exist, often for very obvious work.” He added that the legislation “will support our innovative technology industry, and sends a clear message to the rest of the world that New Zealand won’t tolerate the vexatious practice of ‘patent trolls’. That is, when software patents are created with the sole purpose of bringing costly litigation against inventive technology companies.” (Press Release, Institute of IT Professionals, IT Professionals Welcome Passing of Patents Bill (Aug. 28, 2013).)