New Zealand: Software patents in New Zealand: Still no clarity

Last Updated: 7 August 2011
Article by Jonathan Lucas

An updated set of guidelines on how patent applications involving software will be examined under the new Patents Act has been published. The much-needed clarity is still lacking.

In June of this year, we reported the unanimous rejection of the draft guidelines issued by the Ministry of Economic Development (MED) for examining patent applications for computer-related inventions in New Zealand under the new Patents Bill.

The MED has now released an Explanatory Note which seeks to clarify the examination approach previously outlined in the draft guidelines.  It improves marginally on the draft guidelines in providing a small amount of clarity but there seems to have been little consideration of the vast majority of the feedback provided on the draft guidelines.  As a result, much of what was criticised in the draft guidelines is still present in the Explanatory Note.  The result is a continued lack of clarity for New Zealand innovators and businesses.

Focus on clause 15(3A)

The Explanatory Note improves on the draft guidelines in that it is solely focused on explaining the extent of exclusion to patentability under clause 15(3A), which says that "a computer program is not a patentable invention".  This is what the MED was tasked to do.  The draft guidelines tried to go further and lay out what will fulfil the "manner of manufacture" requirement as well, but feedback was received to the effect that this was not appropriate given the wealth of established case law in this field.

No solution to fundamental problems

In the Explanatory Note, the MED has failed to address the key issues identified by most of the parties who filed submissions to the draft guidelines.  Firstly, most of the submissions wanted clause 15(3A) to be removed because of the adverse effect it will have on New Zealand's innovators and economy.  Secondly, there was much concern that any guidelines would be disregarded by a court in the face of an exclusion in the form of clause 15(3A).

But those issues stem from the proposed wording of the legislation and only the lawmakers can alter this.  The MED has tackled the task it was set, which is to come up with examination guidelines within the context of clause 15(3A).  Unfortunately, the draft guidelines and Explanatory Note have led to even less clarity.

No adoption of European approach to examination

Most of the submissions on the draft guidelines argued that the approach of the European Patent Office (EPO) to examining patent applications would provide the clearest position in the event that an exclusion to patentability for software inventions remains in the legislation.  Some submissions pointed out that the law in the UK has developed since Aerotel and therefore New Zealand courts are likely to look to the most recent UK decisions when issuing rulings.

The MED has chosen to overlook this feedback and the Explanatory Note maintains the use of the Aerotel test for examination.  MED's justification for this is that the UK developments since Aerotel move its law closer to that of the EPO but European law is fundamentally different to New Zealand law in that it requires a "technical contribution" for patentability; a concept not present in the Patents Bill.  This distinction seems somewhat flawed and results from the decision to maintain the "manner of manufacture" requirement in the New Zealand Patents Bill.  Such wording aligns New Zealand's legislation with that of Australia, but causes problems when New Zealand attempts to impose an exclusion not present in Australia.

Unclear example

In an attempt to clarify the position proposed in New Zealand, the Explanatory Note provides examples of inventions that would and would not be patentable under clause 15(3A) of the Patents Bill.  Regrettably, one of the examples seems only to muddy the waters further.

The example in question is an invention which improves the operation of a computer by providing a way of indexing library functions to ensure the computer operates reliably following changes to the library.  According to the Explanatory Note, such an invention would not be patentable in New Zealand because the contribution to human knowledge is no more than a computer program, so is excluded under clause 15(3A).  There seem to be two problems with this conclusion.

Firstly, paragraph 38 of the Explanatory Note sets out a number of questions which can be used to help determine whether the actual contribution to human knowledge made by the invention is just a computer program (in which case it would fail step three of the Aerotel test).  One of these questions is: "is the computer program merely a tool adapted to achieve efficiency or something similar?"  If the answer is yes, the invention is unlikely to be excluded from patentability.  In the example in question, the invention has the effect of ensuring a computer continues to operate reliably.  Surely this constitutes a tool to achieve efficiency or something similar, so how can it not be patentable according to the questions in paragraph 38?

Secondly, the Explanatory Note does not seem to apply the modified Aerotel test to the example.  If it did, the conclusion would be that the invention was patentable.  This example is essentially the invention that was the subject of a UK patent application by Symbian Ltd.  The UK Court of Appeal applied the Aerotel test and held the invention to be patentable.

The Explanatory Note recognises that the conclusion differs from UK (and European) practice, explaining that this is because the UK requires a "technical contribution" for patentability.  However, the requirement that an invention is technical is tested by the fourth step of the Aerotel test, which has been dropped in the revised version of the test in the Explanatory Note.  Applying the first three steps of Aerotel to the example should result in the conclusion that the invention is patentable, just as was the case in the Symbian decision of the UK Court of Appeal.

The crucial point made by the judge in Symbian is that a computer operating by way of the claimed method is a better computer because it is faster and more reliable than it would be without the method.  Saying that the invention is simply a better computer program gives no credit to the practical reality of the effect produced on the computer itself.  As such, the contribution to human knowledge is more than simply a program for a computer.  There seems to be no reason why the same consideration would not make such an invention patentable in New Zealand in view of clause 15(3A).

Over to the lawmakers

The MED was faced with a very difficult task of coming up with guidelines for examining patent applications involving computer-related inventions in the face of clause 15(3A).  Unfortunately, the draft guidelines and Explanatory Note have not resulted in a position that leaves New Zealand innovators clear as to what is patentable and what is not.

There is no formal procedure for providing feedback on the Explanatory Note but, even if there was, the feedback would be more of the same.  It seems that it is now back to the lawmakers to try to resolve the problems identified in the submissions.  Hopefully a solution will involve re-examining the basis for introducing clause 15(3A) in the first place, but otherwise by looking to align the wording of New Zealand's legislation more closely with that of the UK and Europe so that the wealth of case law in those jurisdictions can give New Zealand innovators and the software industry some confidence as to what a New Zealand court is likely to consider patentable.  Clarity is key.

This article was written by Jonathan Lucas, an Associate in our Auckland office.  To contact Jonathan, please email him on 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 2010 New Zealand Law Awards winner of the Intellectual Property Law Award for excellence in client service.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

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”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
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).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.