Further guidance on Australian and New Zealand software patentability

Further guidance on Australian and New Zealand software patentability – 17 April 2014

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In September 2013, we outlined conflicting authorities on the patentability of computer implemented inventions under Australian law (Practical guidance on Australian software patentability). Both of the conflicting authorities are on appeal – we are eagerly awaiting those decisions any day now.

In the meantime, it’s apt to draw attention to the explicit provisions of New Zealand’s soon to be implemented Patents Act 2013, which make clear that computer programs as such will not be patentable in New Zealand.

The as such provision is an import from European patent law (see Article 52 of the European Patent Convention) and the Explanatory Note of the statutory instrument which introduced the wording suggests that similar restrictions on what is considered patentable may apply. If case law in Europe is followed, computer implemented inventions allowable in Australia may not be allowable in New Zealand. However, conversely, computer implemented inventions in New Zealand are very likely to be allowable in Australia.

Clause 11 of the New Zealand Patents Act 2013, which will come into force on 13 September 2014, includes, includes examples of what is and is not patentable in relation to computer programs within the Act itself. In the face of the uncertainty of conflicting Australian authority, and the strong likelihood that New Zealand law will provide a less permissive view of patentable computer implemented inventions, these examples are useful reference points for patentability.

The examples include:

  1. a potentially patentable computer program that controls the operation of the washing machine; and
  2. an unpatentable computer program for automatically completing the legal documents necessary to register an entity.

The distinction turns on whether ‘the actual contribution made by the alleged invention lies solely in it being a computer program’. Example 1 qualifies because ‘the actual contribution lies in the way in which the washing machine works (rather than in the computer program per se)’.

This concept of ‘actual contribution’ seems to be closely tied to the concept of the mere use of a computer discussed in our earlier article.

Importantly, the transitional provisions of the Patents Act 2013 state that the new law will apply to national phase application or convention applications filed on or after 13 September 2014, regardless of whether the international filing date or priority date was prior to that date. If New Zealand Convention applications and/or national phase applications to computer implemented inventions are contemplated, early action should be taken to ensure that the applications benefit from the current, more lenient, law.

Further reading

Authored by

Ian Lindsay

Patent attorney & trade marks attorney