|Is this a comment, or merely|
an illustration? You be the judge!
Rather than attempt to encapsulate a definition of 'embedded software' into the Bill, NZ Commerce Minister Simon Power asked the Intellectual Property Office of New Zealand (IPONZ) to 'develop guidelines to allow inventions that contain embedded software to be patented.'
On 20 December 2010, IPONZ issued draft guidelines in response to the Minister's instructions.
DRAWING ON AUSTRALIAN AND UK LAW
The draft guidelines observe that there are similarities between certain provisions of the Bill and both the Australian and UK patent legislation. Specifically, the general requirements for patentability are similar to the Australian provisions, being based on a judicially-developed 'manner of manufacture' test, while the concept of an exclusion for computer programs is similar to the UK (or European) scheme.
The approach proposed by IPONZ therefore follows Australian authorities in relation to the 'manner of manufacture' requirement, determining that claimed subject matter must produce an end result that is 'an artificially created state of affairs' in a 'field of economic endeavour' and, additionally, must produce a 'physical effect' (following the Australian NRDC and Grant cases).
On the UK side, IPONZ has been influenced largely by the so-called 'Aerotel test' (Aerotel Ltd. v Telco Holdings Ltd  EWCA Civ 1371). The draft guidelines note:
...that it is the broad principles set out in the Aerotel test which are considered here and not the specific elements of the test itself. There are differences between the proposed law of New Zealand and the UK law that may caution against adoption of the Aerotel test in its entirety.
The draft guidelines therefore propose the application of the first three steps of the four-step Aerotel test, namely:
- Properly construe the claim;
- Identify the actual contribution; and
- Ask whether it the contribution falls solely within the excluded subject matter.
SCOPE OF EXCLUSION - COMPUTER PROGRAMS 'AS SUCH'?
While the Minister declined to consider an amendment to the Bill specifying that the exclusion is limited to 'computer programs as such' (as in the European Patent Convention), in finding guidance in the UK authorities IPONZ is effectively importing this limitation. Indeed, the draft guidelines themselves acknowledge that:
The third step (3) of the Aerotel test asks does the contribution lie “solely” within the excluded area? The requirement that the actual contribution lie solely within the excluded area is a reflection of the “as such” qualifier of EPC Article 52(3). However, there is no “as such” limitation in the exclusion under clause 15(3A).They go on to make the point that it should not be possible to circumvent the exclusion (which is characterised as a 'hard exclusion') merely by reciting some hardware, or a physical carrier (e.g. in the form of a Beauregard-style claim), in the claims. The second step (identifying the actual contribution) is therefore important.
The guidelines suggest some questions that might usefully be asked in order to determine whether subject matter is excluded:
- Is the artifact or process new and non-obvious merely because there is a computer program? If yes, then it is excluded.
- Would the artifact or process still be new and non-obvious in principle even if the same decisions and commands were undertaken a different way? If no, then it is excluded.
- Is the computer program merely a tool adapted to achieve efficiency or something similar? If yes, then it is not likely to be excluded.
If the draft guidelines are adopted, the requirements for a claim to a computer-implemented invention to be patentable will be:
- the 'actual contribution' made by the claimed invention will need to encompass something more than just the implementation in software; and
- the end result will need to involve some 'physical effect'.
However, it is not clear whether this approach will exclude novel processing of data that represents physical artifacts (e.g. image processing of MRI or X-ray scan data) where the only 'physical effect' may be in the quality or content of a computer display. We find this uncertainty to be of some concern.
The draft guidelines are open for comment until Friday, 11 March 2011. Comments may be sent via email to firstname.lastname@example.org.