IPONZ has recently published draft guidelines on how patent
applications involving software will be examined under the new
Earlier this year we reported the Minister of Commerce's
decision that computer programs will be excluded from patentability
in the new Patents Act. This followed the recommendations of the
Commerce Select Committee, despite industry opposition to the
exclusion. In his announcement, Simon Power (the Minister of
Commerce) tasked IPONZ to draft guidelines that would allow
inventions for "embedded" software.
The draft guidelines were published on Monday 20 December 2010
and are available from the Ministry of Economic Developments
website - Ministry of Economic Development's draft
The Ministry has invited submissions on the draft guidelines,
which need to be filed by 11 March 2011.
There will no doubt be in-depth scrutiny of the guidelines early
in 2011. James & Wells will provide more thoughts once we have
had a chance to consider them in more detail.
Until then we would be interested to hear your views –
do you think the guidelines clarify the issues for applicants? Do
they exclude too much technology from patentability or too little?
Let us know by contacting Jonathan Lucas.
Here are our initial reactions to get you thinking:
The guidelines were intended to cover the examination of patent
applications for embedded software. How can they successfully do
this when they don't use the term "embedded"
The proposed examination approach of deciding whether or not a
software-related invention is patentable follows that of the UK,
yet the wording of the UK law is different to that proposed in the
Patents Bill. What problems might this create?
IPONZ guidelines have been ignored by the courts in the past
because they have no official status ('Lost in the dark'
article). How much influence will the guidelines have in a court of
This article was written by Jonathan Lucas, an Associate in our
Auckland office. To contact Jonathan, please email him on
email@example.com, or phone 09 914 6740.
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
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
Department of Industrial Policy and Promotion recently issued an office memorandum pursuant to receiving representations from various stakeholders for guidance with respect to the applicability of the provisions of Section 31D of the Copyright Act, 1957.
An Invention Disclosure Form is the documentation of the invention. This is a means to document particulars of your invention and submitting it to the patent attorney who is filing your patent application.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).