Following several years of uncertainty over the form and
function of New Zealand patent law's "software
exclusion", the Government has now adopted the "as
such" wording of EPC Article 52(3). Although the legislation
is still "fluid" insofar as it has yet to be passed by
Parliament, recent events lead us to believe that "as
such" will indeed become the final form of the exclusion.
New Zealand patent law is in the throes of reform. In our
previous article (
we mentioned that the Patents Bill 2008 was now being
prioritised by the Government, seemingly as the result of an
"innovation drive". We noted that in the past week, it
had advanced from #50 to #7 on the Parliamentary Agenda –
and that it was expected to be passed before the year's
On 28 August 2012, a Supplementary Order Paper (SOP) was tabled
in New Zealand's Parliament. The SOP proposes certain
amendments to the wording of the Patents Bill. Of these,
the most significant change comes in relation to computer
After initially (back in 2004, when the Exposure Draft of the
Patents Bill was released) proposing to allow software
patents, the Government then bowed down to a well organised
anti-software lobby during the public consultation process; a
blanket exclusion was proposed. However, whilst popular with
proponents of open-source software, the proposed exclusion had two
Firstly, Article 27 of the TRIPS Agreement requires signatories
(of which New Zealand is one) to make patents available in
"all fields of technology"; the proposed blanket
exclusion was thought to contravene this requirement.
Secondly, New Zealand is presently attempting to negotiate a
Free Trade Agreement (FTA) with the United States. The US
government publishes an annual report entitled Foreign Trade
Barriers in which it particularises laws and regulatory
mechanisms in foreign countries that are considered
"significant barriers to US exports". In this document,
the proposed ban on software patents has been identified as an
impediment to trade.
Clearly then, the proposed blanket exclusion was untenable. As
an alternative, the Government elected to adopt the wording of
Europe's software "exclusion". The compromise
position is now that rather than excluding a computer program from
being a patentable invention, only computer programs "as
such" will be excluded. The amended clause allows New Zealand
to borrow from some three decades of European case law as to the
parameters of "as such", thereby providing
"relative" certainty to patentees and third parties
alike. Under the revised Bill, a patent may still be granted for an
invention that meets all of the criteria for patentability (for
example, novelty and an inventive step) despite the fact that the
relevant invention involves a computer program in some respect.
As mentioned above, we feel that "as such" will be the
"final" form of the exclusion. Our previous article
suggested that the Bill would again pass to a Select
Committee – and that public consultation would again be
invited. Indeed, this would be the "regular" course of
events. However, on 3 September 2012, Craig Foss, the Minister in
charge of the Patents Bill indicated that this would not
happen: "I do not see any justification for delaying passage
of the Patents Bill further, particularly given the
benefits to New Zealand in having modern patent legislation,"
Foss' statement is consistent with our recent impression
that the Patents Bill is now a genuine priority for the
Government. The Bill now is currently awaiting a second
Parliamentary reading – and these recent developments
certainly suggest that we are much closer to a new patents regime
than we may have thought.
Shelston IP has an office in Auckland, providing New Zealand
legal advice on intellectual property matters. In addition, each of
Shelston IP's Australian Patent Attorneys is dual-registered in
New Zealand, where we practice extensively. We retain an active
interest in seeing New Zealand's present, outdated patents
legislation modernised appropriately, to the expected benefit of
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.
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