Software Inventions in New Zealand

On 14 May 2013 the Government introduced a supplementary order paper which proposed further amendments to the its controversial computer program exclusion, forming part of the Patents Bill.

The exclusion is of a computer program per se – with an attempt to define what that means.  The two most relevant clauses are:

Clause 10A (3):

“A claim in a patent or an application relates to a computer program as such if the actual contribution made by the alleged invention lies solely in it being a computer program.”

Clause 10A (4):

“The Commissioner or the court (as the case may be) must, in identifying the actual contribution made by the alleged invention, consider the following:

(a)     the substance of the claim (rather than its form and the contribution alleged by the applicant) and the actual contribution it makes:

(b)     what problem or other issue is to be solved or addressed:

(c)     how the relevant product or process solves or addresses the problem or other issue:

(d)     the advantages or benefits of solving or addressing the problem or other issue in that manner:

(e)     any other matters the Commissioner or the court thinks relevant.”

The revised approach is similar to that adopted by the English Court of Appeal in Aerotel Ltd v Telco Holdings Ltd & Ors, [2006] EWCA Civ 1371 – requiring an assessment to be made of the actual contribution made by the inventor, followed by an assessment as to whether that contribution comes from within an excluded category or from outside that category. 

This proposed change has received wider acceptance within New Zealand, particularly from the software industry and there now seems to be no impediment to the legislation finally passing into law.

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