Software Patents and the TPP
Our recent articles have summarised the issues surrounding the Trans-Pacific Partnership (TPP) negotiations relating to pharmaceuticals and patent protection (here), and trade marks and geographical indications (here). Another issue which has received attention is the potential impact of any TPP agreement on the patentability of computer software.
The New Zealand Institute of IT Professionals has written an open letter to New Zealand’s Trade Minister Tim Groser expressing concern that the TPP would remove the ability of New Zealand to exclude software from patentability. In response, Mr Groser said that “nothing currently under discussion in the TPP will require any change to New Zealand legislation or policy in respect to software patents”.
What is the law on software patentability in New Zealand?
The Patents Act 2013 came into force on 13 September 2014. Section 11 of the Act excludes a computer program ‘as such’ from being a patentable invention. This exclusion is modelled on European patent legislation. It is intended to exclude inventions from being patentable where the contribution made by the invention “lies solely in it being a computer program”, i.e. where the invention contributes nothing more than a new computer program.
If an invention contributes something beyond a computer program, the invention will have patentable subject matter. An example given in the Act of a patentable invention is a known washing machine programmed to operate in a new and improved way. In that example, the contribution was held to lie in the way in which the washing machine works (rather than in the computer program per se).
What does the draft TPP agreement say about patentability?
Article QQ.E.1 in the draft IP chapter of the TPP agreement contains clauses on patentability which closely mirror clauses in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to which New Zealand and all other members of the World Trade Organisation are already obliged to adhere to.
In particular, Article QQ.E.1 states that, subject to specific exclusions:
“[E]ach Party shall make patents available for any invention, whether a product or process, in all fields of technology, provided that the invention is new, involves an inventive step, and is capable of industrial application.”
This wording is almost identical to that found in Article 27(1) of the TRIPS agreement. The specific exclusions from patentability listed in Article QQ.E.1 are the same as those listed in the TRIPS agreement, namely:
- inventions which are contrary to morality;
diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
plants and animals other than microorganisms; and
essentially biological processes for the production of plants or animals, other than non-biological and microbiological processes.
Like the TRIPS agreement, there is no clause in the draft TPP agreement which expressly permits a country to exclude a computer program from patentability.
Following in the footsteps of Europe
Will the TPP agreement require New Zealand to remove or modify the software exclusion in section 11 of the Patents Act 2013? Probably not.
Section 11 of the Patents Act 2013 was specifically drafted to be compliant with New Zealand’s international obligations under the TRIPS agreement. Article QQ.E.1 of the TPP agreement merely replicates the patentability clauses from the TRIPS agreement.
There are no European countries at the TPP negotiating table. However, as mentioned above, section 11 of the Patents Act 2013 is modelled on European patent legislation. 35 of the 38 European countries who are members of the European Patent Organisation are also members of the World Trade Organisation. If the European approach to software patentability fits within the TRIPS agreement then there does not appear to be any good reason why New Zealand's equivalent approach should not fit within the TPP agreement.
If the word “invention” in the TPP agreement is interpreted in the same way as Europe and New Zealand appear to interpret the word “invention” in the TRIPS agreement (i.e. that a computer program ‘as such’ is not an invention) then there is no need for a specific clause in the TPP agreement allowing computer programs ‘as such’ to be excluded from patentability.
Frank Callus - August 2015
 “TPP a threat to software patents? Groser responds to tech industry’s open letter” The National Business Review, 13 August 2015.
 Section 1(2)(c) of the UK Patents Act 1977 and Article 52(c) of the European Patent Convention.
 Section 11(3) of the Patents Act 2013.
 Section 11 of the Patents Act 2013, “Examples”.
 A draft text of the IP chapter of the TPP agreement was leaked on 4 August 2015. This text appears to represent the negotiating position of participant countries as at 11 May 2015, i.e. prior to the Maui round of negotiations. A copy of the text can be found here:http://keionline.org/tpp/11may2015-ip-text.
 The explanatory note to Supplementary Order Paper No. 237 states: “Rather than excluding a computer program from being a patentable invention, new clause 10A clarifies that a computer program is not an invention nor a manner of manufacture for the purposes of the Bill (and that this prevents anything from being an invention or manner of manufacture only to the extent that a patent or an application relates to a computer program as such). This approach is considered to be more consistent with New Zealand’s international obligations (the TRIPS agreement, in particular, contains restrictions on the ability to exclude inventions from patentability).” The SOP can be viewed here:http://www.legislation.govt.nz/sop/government/2013/0237/latest/DLM5187401.html.
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