SIGN UP TO OUR EZINE
Background
Section 11 of the New Zealand Patents Act 2013 prohibits claims directed to a computer program “as such”.
The “as such” wording was taken from the European Patent Convention and the United Kingdom Patents Act, codifying the first three steps of the test set out in Aerotel Ltd. v Telco Holdings Ltd & Ors Rev 1 [2006] EWCA Civ 1371 (Aerotel). The intention is that the Commissioner of Patents and the New Zealand courts should apply the Aerotel test and subsequent English jurisprudence that applies the test, when considering patent applications involving computer programs. (Hansard, 27 August 2013, Vol:693; Page:12976).
The fourth step of the Aerotel test, requiring a check of whether the actual or alleged contribution is actually technical in nature, was not adopted. To do so would have invoked all of the other exclusions of the U.K. section 1(2). In New Zealand, the exclusion of the other categories defined in U.K. s 1(2) is instead determined by the common law.
Examples
Section 11 gives two “examples” indicating patentable and non-patentable subject matter under the law. The “process which is not an invention” example relates to a process for automatically completing documents. This corresponds to the process of Macrossan’s claims in Aerotel, which were held non-patentable in the U.K. by the Court of Appeal. The “process which may be an invention” relates to a new and improved way of operating a machine which is implemented by a computer program.
Subsequent English jurisprudence
IPONZ has adopted the five “signposts” of AT&T Knowledge Ventures v Comptroller General of Patents [2009] EWHC 343 (PAT) (AT&T) as an aid to determining whether a claimed invention involving a computer program relates to a computer program ‘as such’. In doing so, they have re-framed the “signposts” so that they are not framed in terms of ‘technical effect’, as follows:
- whether the computer program, when run, has an effect on a process which is carried on outside the computer;
- whether the program, when run, operates at the level of the architecture of the computer; that is to say whether the effect produced by the program is produced irrespective of the data being processed or the applications being run;
- whether the program, when run, results in the computer being made to operate in a new way;
- whether the program, when run, makes the computer a better computer in the sense of running more efficiently and effectively as a computer;
- whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
See: IPONZ Patents Examination Manual, section 11.37.
Guidance from New Zealand decisions
To date, the approach taken by IPONZ has received no comment from the Commissioner or the Courts, as there has been no case which has tested the boundary of the new section 11 exclusion.
However, it is clear that the requirement to ignore the fourth step of the Aerotel test may necessitate some departure from U.K. law and practice.
Exclusion of computer programs and “manner-of-manufacture” test
Section 14(a) states that an invention is a patentable invention if the invention, so far as claimed in a claim, is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. Section 11 states that a computer program is not an invention and not a manner of manufacture for the purposes of the Act.
Thus, the definition of manner of manufacture in section 14(a) is distinct from the exclusion of section 11. In practice, we have observed that if the Office raises an objection under section 11, they will also raise an objection under section 14(a).
Addressing an objection under section 11
The approach to addressing an objection under section 11 will differ in each case. Successful strategies for overcoming an objection of this type include:
- demonstrating that the “actual contribution” made by the invention does not lie solely in the invention being a computer program, i.e. the invention contributes something beyond a new computer program,
- demonstrating that the claimed invention satisfies at least one of the five “signposts” of AT&T Knowledge Ventures v Comptroller General of Patents [2009] EWHC 343 (‘AT&T’),
- amending the claims to relate to a product,
- amending the claims to include new features resulting in a technological benefit.
November 2017
For more basic information on the New Zealand patents process for inventions, please click here.
