Guidelines do not clarify software patent question say submissions
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Most submissions on the guidelines formulated by the Intellectual Property Office of New Zealand (IPONZ) on patentability of software suggest the guidelines have not achieved the desired clarification of proposed legislation and may have served further to muddy the question of what software is or is not patentable.
Section 15 (3A) of the Patents Bill – currently awaiting its second reading in Parliament – simply states “a computer program is not a patentable invention”. This clause was inserted by the Commerce Select Committee, on the strength of a number of submissions.
Further debate has seen the Ministry of Economic Development suggest that the committee did not intend to exclude “embedded” software – that is, in broad terms, software that controls a machine, achieving a physical effect outside the realm of pure computation.
The IPONZ guidelines attempt to achieve something like that qualification, while studiously avoiding using the term “embedded”. Several submissions, such as those from Fisher & Paykel Appliances and from John Rankin of Affinity and Don Christie of Catalyst IT, recommend putting the term explicitly in the guidelines, if not in the Bill itself, and either setting ICT industry representatives to work towards a definition of the term or taking on board existing definitions.
The F&P submission suggests “there is no great difficulty” in defining what “embedded” means, and points out that there is a definition in Wikipedia.
However, this, like many Wikipedia articles, is disputed; Wikipedia editors have appended notes reading ‘clarification needed” and “dubious – discuss”.
The IPONZ guidelines themselves point out exceptions such as the recording of a discovery in print. While that constitutes a physical effect it is not one that is ‘central” to the discovery and hence does not of itself render the discovery patentable, they say.
A submission from the Airways Corporation refers to its air-traffic control software as having the undoubted physical effect of avoiding mid-air collisions; yet since it achieves that effect by communicating and displaying data, it is not embedded software within many accepted meanings of the term, particularly those that exclude any software that runs on a general-purpose computer.
“We are concerned that vital air-traffic systems would not be patentable under the current guidelines,” Airways says.
Several submissions contend that the IPONZ guidelines will have no real weight in law and will in due course be superseded by a literal interpretation of Section 15(3A) or by case law formulated by judges.
The guidelines rely heavily on a test (called the Aerotel test) drawn from UK law, but some submissions say since the Bill and guidelines are not elsewhere consistent with UK law, this creates confusion. The International Federation of Intellectual Property Attorneys contends that the Aerotel test has been outdated by subsequent UK case-law. By relying on the test, “New Zealand risks isolation in the worldwide intellectual property community,” the Federation says.
A number of submitters, for example Geological and Nuclear Sciences, suggest that NZ should not stand out on its own but harmonise its law more clearly with that of Australia, the US or Europe, where our major markets lie.
Submissions from entrenched champions of software patent such as Microsoft and NZICT, as well as some from more equivocal sources, suggest the best course might be to scrap s15(3A) altogether.
Commerce Minster Simon Power, announcing the intention to formulate the guidelines, in July last year, saw them as making it possible for the Patents Bill to proceed through its remaining stages independently of debate on the guidelines themselves. Indeed, he expected the Bill to pass before the guidelines were finalised.
So the intent of the guideline is twofold. First, to avoid inadvertently excluding from patentability inventions which happen to contain embedded software. Second, to stop claimants circumventing section 15 (3A) by disguising an attempt to patent a computer program as a claim for an invention containing embedded software. The extent to which it achieves these aims is likely to be a source of ongoing dialogue.
The select committee report raises an important issue and we ought to focus on how well the draft guideline addresses it. As other commenters have pointed out, the committee heard all the evidence from all sides and unanimously concluded that software and patents need to get a divorce.
Posted by John Rankin at 11:01:35 on June 22, 2011
"While the bill would provide adequate incentives for innovation, however, we are aware of New Zealand companies who have invested in a significant number of software-related inventions, involving embedded software."
"We sought advice on the approach taken in other jurisdictions such as the United Kingdom and the United States, and whether legislation that would enable "embedded software" to be patentable might be practicable."
"After careful consideration we concluded that developing a clear and definitive distinction between embedded and other types of software is not a simple matter; and that, for the sake of clarity, a simple approach would be best. We received advice that our recommendation to include computer programs among the inventions that may not be patented would be unlikely to prevent the granting of patents for inventions involving embedded software."
The purpose was clearly to allow "embedded software" to be patentable.
Posted by Anonymous at 21:23:19 on June 22, 2011
Posted by John Rankin at 21:48:43 on June 22, 2011
Posted by Anonymous at 21:29:55 on June 27, 2011
For completeness sake it would have been relevant for the article to point to the NZOSS position:
and also the NZCS commentary on why they did not think it necessary to submit in this topic. The MED was not consulting on whether software patents should be allowed. The evidence for that has been reviewed and the conclusion reached.
Posted by Don Christie at 11:30:49 on June 21, 2011
There was no consultation on whether software patents should be allowed in 2009 either. The evidence for that had been reviewed and the conclusion reached. In 2003.
Clause 15(3A) only happened because has been no open consultation on software patents. Since 2003.
Posted by Anonymous at 17:23:04 on June 21, 2011
Just because the NZICT and Microsoft "thought the whole thing was sewn up" beforehand and neglected to make a submission doesn't mean it wasn't open consultation.
It just means that the formidable multinational-backed lobbying forces those two entities represent... were asleep at the wheel. Now they're trying hard to wind back the clock to save some face... Unfortunately for them, you snooze, you lose. Of course, the fact that they lacked a compelling argument, and the fact that they're *not software developers* means that even had they submitted, wouldn't have helped their cause.
Face it, Microsoft (and, by extension, NZICT) - you've got a lot invested in software patents - it allows you to control the software market. Heck, it might even mean you'll make revenue in the mobile market (by suing successful of Android OEMs). But that's not the purpose of software patents.
Software patents are bad for the industry - the whole software industry knows it. The US will be the last to wake up but the rest of the world will. NZ is just the first domino to fall. And plugging that crack in the dam is why MS and NZICT and the IP lawyers are working so hard to try to reverse this decision (even though reversal isn't one of the options).
Posted by Dave Lane at 23:07:41 on June 21, 2011
Posted by John Rankin at 8:19:00 on June 23, 2011
Hi John, I'm pretty sure that document is from 2002. Try clicking on the PDF version and you will see it is dated March 2002. The "last updated" note at the top of the web pate is not the publication date.
Posted by Waldo at 10:06:19 on June 23, 2011
Posted by John Rankin at 13:10:06 on June 23, 2011