Putting aside whether or not software should be patentable, the
immediate question is – what does this mean for those
wanting patent protection for software related inventions in New
In the short term, not a lot. Until the new Act commences
(perhaps not for several years), the status quo will remain and
computer programs will continue to be patentable in New Zealand
– embedded or otherwise.
Some parties are questioning the value of proceeding with the
patent process for their software related inventions if there is
the potential (or even likelihood) that the new Act could exclude
the subject matter of their invention from patentability. What
about those patents already granted, or applications filed before
the new Act comes into force? Given that the lifespan of a granted
patent in New Zealand may be up to 20 years, this is a valid
Firstly, the current Patents Bill includes several transition
provisions directed to this very issue.
Essentially, the current New Zealand Patents Act 1953 will
continue to apply to those granted patents and complete
applications having a filing date before commencement of the new
Act. The same applies to divisional applications if "the fresh
patent application is given a date before that
As computer programs are patentable subject matter under the
current Act, patents/complete applications which fall within the
transition provisions and are directed to computer programs which:
1) embody a novel concept, and 2) have a commercially useful
effect, will continue to be valid after commencement of the new
Complete-after-provisional applications claiming priority to an
earlier priority date, but filed on or after the date of
commencement will fall under the new Act. Patent applicants having
a pending provisional patent application filed within one year
before the new Act comes into force would be recommended to discuss
filing an early complete application with their patent attorneys to
take advantage of the provisions.
Secondly, as other commentators have already pointed out
– it is still unclear what software related inventions
the new Act will actually exclude in practice. It is probable that
patent attorneys will test the limitations on behalf of their
clients, and the scope of protection available may not be as
restricted as feared (or celebrated). Many inventors/businesses
could miss out on protection they were ultimately entitled to
because they chose not to patent in the face of such uncertainty.
Additionally, often the underlying invention is not restricted to
being expressed only in software – something businesses
may not appreciate until they talk to a patent attorney.
In any case, an application may be highly useful as part of your
commercial strategy beyond the ability to enforce your rights after
grant. It may have value for its deterrent effect, or in defining
the invention and contributions of inventors when entering into
dealings with other parties.
Thirdly, we are talking about New Zealand legislation only.
Software is patentable in many international jurisdictions such as
Australia and the US, with others such as Europe allowing
"embedded" software. Even after commencement of the new
Act, filing a New Zealand provisional patent application may be a
relatively inexpensive means for establishing a priority date for
overseas applications. For a small market like our own, this is a
highly relevant consideration.
To summarise, the patentability of software is a highly
contentious issue around the world. In New Zealand, the simple
facts are these:
Computer programs are currently patentable in New Zealand;
The proposed changes to legislation will not come into force
for some time;
The effect of these changes on the patentability of software is
There are provisions confirming the eligibility of patentable
subject matter for existing software patents/applications after the
New Zealand patent applications may form the basis for
applications in other jurisdictions, regardless of whether the
subject matter is ultimately patentable in New Zealand.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
James and Wells is the 2009 New Zealand Law Awards winner of
the Intellectual Property Law Award for excellence in client
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Traditional Knowledge (TK) is a living body of knowledge that is developed, sustained and passed on from generation to generation within a community, often forming part of its cultural or spiritual identity.
The Full Federal Court has now determined that infringement cannot occur until the grant of the innovation patent.
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