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Note to Mainstream Media: New Zealand has not bann


By
Smith & Hopen PA

A number of media outlets published stories today (ZDNet, InfoWorldQuartz)  that New Zealand has banned software patents.  These reports are recklessly inaccurate. The new NZ legislation on software patents is quite analogous to the US, UK and EU positions. NZ is simply saying that software alone…without other technical advancement is not patentable. For example, the NZ software “exclusion” reads in part:

Subsection (1) prevents anything from being an invention or a manner of manufacture for the purposes of this Act only to the extent that a claim in a patent or an application relates to a computer program as such.

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. [emphasis added]

This means you cannot take a known process…perhaps one you could do on pad and pencil and magically make it patentable by writing it into a software program.  The NZ law further provides an example of an unpatentable software invention:

An inventor has developed a process for automatically completing the legal documents necessary to register an entity.  The claimed process involves a computer asking questions of a user. The answers are stored in a database and the information is processed using a computer program to produce the required legal documents, which are then sent to the user.

This process would certainly not be patentable in the United States either.  There is no “transformation” of the data or artificial intelligence applied in the process enumerated above.  The mere acquisition, storage and reporting of data is not patentable in the United States. 

Guidelines and Recommendations

We have published practical guidelines and flowcharts for drafting optimum software patents in the U.S. and such guidelines should be useful in New Zealand.  They include:

  • DO: specify the particular type or nature of data claimed (i.e., bit, string, integer, float);

  • DO: specify how or from where the data was obtained (i.e., received from database SQL query, intercepted from HTTP stream, read from text file);

  • DO: indicate what the data represents (i.e., “a numerical value less than 7 indicating an acidic solution,” “a latency value of greater than 100 millisecond indicating a packet error”);

  • DO: claim the transformation of raw data into a new visual depiction of a physical object on a display;

  • DO: claim unique “data gathering” steps applied to an algorithm;

  • DON’T: claim undefined “complex systems”;

  • DON’T: claim indeterminate “factors” drawn from unspecified “testing”;

  • DON’T: assume that adding a “data gathering” step alone will make an algorithm claim patentable;

  • DON’T: assume that adding a “data recording” step alone will make an algorithm claim patentable (In re. Schrader, 22 F.3d 290).

Perhaps one of the most useful guides, 101 Method Eligibility Quick Reference Sheet, was published to the USPTO examining corps. in July 2010.   For more recent guidance, see the Federal Circuit’s June 21, 2013 Ultramercial v. Hulu decision on software patents.  In Ultramercial the primary consideration against software patentability is that the claims would preempt the core concept without meaningful limitations. 

By analogy, had Thomas Edison claimed “all electric illumination” such a patent would have preempted fluorescent and LED lighting even though only incandescent technology was known at the time.  The New Zealand law has not banned software patents nor meaningfully limited them.  It is the author’s opinion the legislation is harmonious rather than adverse to software patentability in other countries.  There are many pathways to protecting software patents and success will largely depend on the experience and knowledge of the patent practitioner in each jurisdiction.






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