The New Zealand Government has released a Supplementary Order Paper to amend the Patents Bill which is awaiting its second and third readings in Parliament. Significantly, there is a proposed amendment to replace the specific exclusion "A computer program is not a patentable invention" (clause 15(3A)) in the Bill with a new clause 10A:

10A Computer programs

(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.

The exclusion provided by previous clause 15(3A) met with objection because equivalent wording does not exist in the legislation of any other country and there was uncertainty about the effect of the proposed exclusion in New Zealand. This was pointed out to the Ministry of Economic Development in 2011 by Henry Hughes and other submitters in response to the release of draft guidelines for the examination of patent applications involving computer programs.

Clause 10A will align New Zealand patent law with corresponding provisions in the UK Patents Act 1977 and the European Patent Convention and will be welcomed by patent applicants because it will permit UK and European decisions on the patentability of computer programs to be of far greater assistance to the New Zealand Intellectual Property Office and the New Zealand Courts when interpreting the ambit of the exclusion. However, overseas decisions will, of course, not be binding on the New Zealand Intellectual Property Office or Courts.

A number of patent applicants had concerns about the potential scope of clause 15(3A). The submission made by Henry Hughes stated that a blanket exclusion against the patenting of all types of computer programs would be likely to be contrary to New Zealand's obligation under the TRIPS Agreement to make patents available "for any inventions, whether products or processes, in all fields of technology, provided they are new, involve an inventive step and are capable of industrial application." It is therefore pleasing to see that the Supplementary Order Paper states that clause 10A 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 proposed amendment has not been universally applauded. The New Zealand Open Source Society has described clause 10A as a “betrayal” which has “more or less thrown kiwi software developers under a bus” in favour of corporations who are “using software patents to set back any would-be competitors”.

The amendments proposed by the Supplementary Order Paper will be debated in Parliament and the Patents Bill is expected to receive its second and third readings shortly. Following Royal assent by the Governor-General, the Bill will then become law. Most of the provisions in the new Patents Act will come into force on 31 December 2013, unless they are brought into force at an earlier date by the Governor-General via an Order in Council.

August 2012