We also reported (here) on subsequent indications that Commerce Minister Simon Power was contemplating a partial backdown on supporting this recommendation.
We can now confirm that this has not come to pass. The Minister yesterday announced that no further amendment to the Patents Bill is "necessary or desirable." Instead, he has "instructed the Intellectual Property Office of New Zealand (IPONZ) to develop guidelines to allow inventions that contain embedded software to be patented."
We have said before, and we will no doubt say again, that it is the experience of every government, patent office and court that has ever attempted to draw a "bright line" between patentable and unpatentable computer-implemented inventions, that this is a futile exercise.
It has taken more than two decades of jurisprudence in the European Patent Office, the US Court of Appeals for the Federal Circuit (and its predecessor) and the US Supreme Court, and the Australian Federal Court to get each of those countries to their respective present positions on so-called "software patents", and other countries have had similar experiences. While there is far greater certainty today in all of these jurisdictions as to where the respective boundaries lie, grey areas remain.
Less than three years ago the UK Intellectual Property Office and the English courts were still flip-flopping on the validity of "computer program product" (ie Beauregard) type claims, and apparatus claims in which the novel features were embodied solely in the form of program code stored on a suitable carrier (eg a hard disk or in memory).
We wish IPONZ the best of luck with its guidelines, but we are not convinced that it will succeed where competent legal and technical minds across the world have failed. We will, in any event, look forward to reading the guidelines.
Before You Go…
Thank you for reading this article to the end – I hope you enjoyed it, and found it useful. Almost every article I post here takes a few hours of my time to research and write, and I have never felt the need to ask for anything in return.
But now – for the first, and perhaps only, time – I am asking for a favour. If you are a patent attorney, examiner, or other professional who is experienced in reading and interpreting patent claims, I could really use your help with my PhD research. My project involves applying artificial intelligence to analyse patent claim scope systematically, with the goal of better understanding how different legal and regulatory choices influence the boundaries of patent protection. But I need data to train my models, and that is where you can potentially assist me. If every qualified person who reads this request could spare just a couple of hours over the next few weeks, I could gather all the data I need.
The task itself is straightforward and web-based – I am asking participants to compare pairs of patent claims and evaluate their relative scope, using an online application that I have designed and implemented over the past few months. No special knowledge is required beyond the ability to read and understand patent claims in technical fields with which you are familiar. You might even find it to be fun!
There is more information on the project website, at claimscopeproject.net. In particular, you can read:
- a detailed description of the study, its goals and benefits; and
- instructions for the use of the online claim comparison application.
Thank you for considering this request!
Mark Summerfield
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