mardi, janvier 18, 2011

New Zealand: Draft Patents Bill guidelines on computer-related inventions

Draft Patents Bill guidelines on computer-related inventions

Contributed by A J Park

The Ministry of Economic Development has prepared draft examination guidelines on the treatment of computer-related inventions in New Zealand. Submissions on the proposed guidelines are due by March 11 2011.

The Commerce Select Committee reported back on the Patents Bill on March 30 2010. The report included a suggested amendment that would exclude all computer programs from patent protection (for further details please see "Select committee report on Patents Bill: computer software not patentable").

The ministry was reported to be considering a wording amendment to allow the patenting of some computer programs. The amendment was expected to bring the wording of the exclusion closer to the restriction contained in the European Patent Convention. However, in July 2010 Commerce Minister Simon Power announced that he considered a further amendment to be neither necessary nor desirable. He instructed officials to develop guidelines to allow the patenting of some computer programs.

Guidelines and regulations would normally have been expected after the bill's enactment. However, the minister has asked for draft guidelines to be prepared before enactment in order to seek comments from interested parties. The consultation is intended to ensure that the Intellectual Property Office of New Zealand gives proper effect to the legislative exclusion in a manner that is likely to find support from a New Zealand court. The guidelines set out the proposed approach to be taken by examiners when examining patent applications that contain claims involving computer programs. The guidelines formulate an adaptation of the Aerotel test applied by the English Court of Appeal.

The proposed approach encourages examiners to:

  • construe the claim properly;
  • identify the actual contribution; and
  • determine whether such contribution falls solely within the excluded subject matter.

The claimed invention will be assessed against the prior art base to determine what contribution - if any - is made to the stock of human knowledge. The claimed subject matter must produce an end result which is an artificially created state of affairs in the field of economic endeavour, and must produce a physical effect. Where the performance of a method causes physical changes in an apparatus, the physical changes must be consequential - that is, they must be essential to the contribution of the invention and not peripheral. A normal interaction between a computer and a computer program is not considered to be an invention unless a physical effect is produced.

The guidelines propose the following questions to determine whether the contribution falls solely within excluded subject matter:

  • Is the artefact or process new and non-obvious merely because there is a computer program? If so, it is excluded.
  • Would the artefact or process still be new and non-obvious in principle if the same decisions and commands were undertaken in a different way? If not, it is excluded.
  • Is the computer program merely a tool adapted to achieve efficiency or something similar? If so, it is unlikely to be excluded.

The Aerotel test contains a fourth step of checking whether the actual or alleged contribution is technical in nature. The proposed guidelines do not suggest checking for a technical contribution. It is expected that the existence of a technical contribution will be assessed in determining whether a physical effect exists.

For further information on this topic please contact Matt Adams at A J Park by telephone (+64 9 356 6996), fax (+64 9 356 6990) or email (