elenasz

Some musings on the Patents Bill

In Intellectual Property, IP, legislation, New Zealand, patent on July 23, 2010 at 1:13 pm

Background

New Zealand’s Patents Act dates back to 1953 and is largely based on the UK Act of 1949.  Significant amendments were made in 1992 to deal with PCT applications.  But other than that the Act has not been much amended since 1953.

The need for new patent legislation to deal with technological changes over the last 60 years has been the subject of discussion from time to time and finally a Bill made it through its first reading in May 2009, and the Select Committee process by the end of March 2010.

As at 22 July, the Patents Bills sits at number 29 on the Order Paper for Parliamentary business for its second reading.

The computer program conundrum

The Select Committee recommended amending clause 15 to include computer programs among inventions that may not be patented.

There were many submissions concerning the patentability of computer programs. Under the Patents Act 1953 computer programs can be patented in New Zealand provided they produce a commercially useful effect.

Open source software proponents, in particular, were critical of the protection of software by patent. Opponents felt that computer software should be excluded from patent protection as software patents can stifle innovation and competition, and can be granted for trivial or existing techniques. In general the Select Committee accepted this position.  However, on the other side of the fence, are those New Zealand companies who have invested in a significant number of software-related inventions, involving embedded software.

The Select Committee sought advice on the approach taken in other jurisdictions such as the United Kingdom and the United States, and whether legislation that would enable “embedded software” to be patentable might be practicable. However, it turned out to be too difficult for the Select Committee to develop a clear and definitive distinction between embedded and other types of software.

Therefore, “for the sake of clarity” the Select Committee decided that “a simple approach would be best”.

Based on advice that their recommendation to include computer programs among the inventions that may not be patented would be unlikely to prevent the granting of patents for inventions involving embedded software, the Select Committee recommended the insertion of clause 15(3A) into the Bill in the following terms: “A computer program is not a patentable invention”.   

This recommendation was coupled with the further recommendation “that the Intellectual Property Office of New Zealand develop guidelines for inventions containing embedded software”.

 The Discussion continued

Even though the Bill had been through the Select Committee process when members of the public get to make submissions on the proposed legislation, the discussion did not end there with various parties making further arguments in favour or against the patentability of computer programs.  

The Commerce Minister was viewed as flip flopping and put an end to speculation in a media release earlier this month confirming that clauses 15(3A) will remain as it is with IPONZ to make guidelines.

 My two cents worth – But is it good law?

I think not!

In this day and age of clear and concise legislation that can be understood by the man (or woman of course) on the street, it is ridiculous that the plain and clear words of an Act – “A computer program is not a patentable invention” – is not intended to mean what it appears to mean.

Surely any IPONZ Guidelines – which are merely “guidelines” and not law – must be ultra vires if they conflict with the clear intent of the Act.  Why should a Judge be expected to look behind the clear meaning of the words of an Act in interpreting it?

It seems likely that the meaning of “computer program” will become the issue with parties on each side to a dispute arguing that the software in issue is or is not a computer program.  This could lead to some interesting arguments.

Why should our innovators be forced to take a matter to the Court to interpret such a provision?   

Given the likely interest in protecting computer programs in New Zealand, this may well be a hard fought battle on both sides with any such dispute potentially going through the court hierarchy up to the Supreme Court – a costly and time consuming process which will lead to much uncertainty and delay for other patents in the interim.  Will previously granted patents become invalid?  

In sum, the Select Committee recommendation will lead to unnecessary delay, uncertainty and cost.  I am disappointed that our parliamentary process has resulted in such an absurdity.

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