Patents Bill – the embedded software solution

Yesterday, hundreds of members of New Zealand’s technology industry expressed their support for a clear exclusion of software patents in New Zealand.

On the other side of this argument are primarily lawyers and patent attorneys, including AJ Park lawyer Matt Adams. I refer to Matt (in a friendly way, I hope!) because he is an expert in the field and has recently written a blog post entitled “The embedded software conundrum”, in which he claims that introducing the term “embedded software” into the Patents Bill will create “uncertainty”.

Matt’s post was timely, because it was at about the same time that myself and others were considering this very issue for the industry petition at SoftwarePatents.org.nz. In the end, we came to the opposite conclusion to Matt: embedded software should be referenced in the Patents Bill (see the requested amendment to clause 10A(2) here), and this approach has been resoundingly supported by the local industry (note the industry-supported amendment uses the interchangable term “embedded computer program”).

But what about the “uncertainty” that Matt refers to? We can’t possibly have an “uncertain” term in the Patents Bill, can we? In this post, I examine the issue of “uncertainty” that Matt raises.

Is it uncertain because there is no definition of “embedded computer program”?

There is no definition of “embedded computer program” in the Bill, nor does the industry-supported amendment include one. So because it’s undefined in the Bill, that creates “uncertainty”, right?

Wrong. Guess what else is not defined in the Bill, nor by any other law in New Zealand, nor by any Court in New Zealand: “computer program”. So how can there be objection to the lack of a definition for “embedded computer program”, when “computer program” itself is not defined? There can’t – and the same applies to many other terms in the Patents Bill.

The fact is, it is perfectly normal for undefined or hard-to-define terms to be used in laws. A major part of what Courts do is interpret laws and ascertain the meaning of words and phrases, including new or previously unconsidered terms. The famous judge Lord Denning said in Seaford Court Estates Ltd v Asher [1949] 2 KB 481:

Whenever a statute comes up for consideration it must be remembered that it is not within human powers to foresee the manifold sets of facts which may arise, and, even if it were, it is not possible to provide for them in terms free from all ambiguity. The English language is not an instrument of mathematical precision.

So far from presenting a “conundrum”, the lack of a definition capable of handling all sets of facts, and free from ambiguity, is not only perfectly normal, but such a definition is impossible. There are numerous undefined, or incompletely defined, terms in the Patents Bill, the Act it replaces, and every other law. For example, at the moment there is a legal question over whether a Segway is “motor vehicle”. Should “motor vehicle” be removed from our laws because it is currently unclear whether Segways or other devices are included? Of course not, but that is the logical conclusion of those who say that “embedded computer program” should not be used in the Bill unless a comprehensive definition is agreed upon.

But how uncertain is embedded software anyway?

Proponents of software patents in New Zealand (i.e. primarily lawyers) have not pointed to any evidence that the term “embedded software” would be uncertain or cause problems. The term “computer program” (or “software”) is not even in the current Act, let alone defined, yet that has not prevented the granting of software patents. So the ball is in their court, so to speak, to justify why “embedded software” would be problematic, when other undefined or even unstated terms (in the current Act and the Bill) are apparently fine.

But it would be the wrong starting point to ask whether people in one industry understand a term from another industry, as an indicator of that term’s “uncertainty”. If a non-meteorologist struggles with a meteorology term, does that make the term uncertain? No, just like a patent attorney unsure about the term “embedded software” does not make that term less certain.

Therefore it is important to look to the industry, in this case the New Zealand IT industry, for acceptance and regular usage of a term. The industry seems to have little difficulty with the term “embedded software”. For example, Fisher & Paykel Appliances, a leading patenter of inventions (and a client of AJ Park, I note), is currently advertising a job for its “Electronics Embedded Software Team“:

We have a range of opportunities to suit either tertiary qualified graduate level and individuals who have experience in working with embedded software development

The term can’t be too uncertain if Fisher & Paykel Appliances has an entire team named after it, and is hiring staff to work on it!

We also know that Fisher & Paykel Appliances’ inventions contain embedded software, apparently without any definitional difficulties. In fact, we have this on the excellent authority of Matt’s AJ Park colleague, Ken Moon, who said recently that:

The exclusion of embedded software inventions of the type devised by high-tech kiwi manufacturers such as Fisher & Paykel Appliances and Navman for their computer controlled appliances GPS systems is somewhat irrational.

(Good news: today’s petition shows that the NZ industry agrees.)

But it’s not just Fisher & Paykel Appliances who have no difficulty with the term embedded software. A quick search on Seek.co.nz shows there are currently 48 jobs using the phrase “embedded software”, including Embedded Software Engineers, Embedded Software Developers, and so on. So while lawyers, for example, may claim the term is uncertain, the evidence is that the software industry itself has no difficulties with it.

There are many other resources confirming the commonplace use of the term in the IT industry. For example, there are over 42,000 articles on Google Scholar discussing “embedded software”, including from authoritative bodies such as the IEEE and Association for Computing Machinery. And of course there have been numerous patents involving “embedded software” already granted. There are many people and resources that can provide a sufficient description of embedded software, with no less certainty than any other words used in either the Patents Bill or elsewhere.

So while some people in New Zealand might be confused or unclear about embedded software, that does not mean that the technology industry, or a Court, would have the same difficulty. In fact the evidence is that they would not. Therefore the onus is on the proponents of software patents in New Zealand to substantiate why a plain-English, industry-accepted term – already used in numerous patents – should not be used in the Patents Bill.

What about “as such”?

Any possible questions about the industry-accepted term “embedded software” pale into insignificance compared to the European-style “as such” exclusion recently introduced into the Bill (i.e. the clause 10A(2) that the petition seeks to replace). If you ever wanted an example of notoriously uncertain, problematic language, it is the European “as such” terminology.

But don’t take my word for it – here’s what the Institute of Patent & Trade Mark Attorneys of Australia said in their 2010 submission to the NZ Minister (and which was expressly endorsed by the Australian Federation of Intellectual Property Attorneys):

[The EPC approach] will still introduce uncertainty and confusion as to the patentability of computer related inventions… The approach in Europe has also led to considerable uncertainty and criticism amongst European industry, the European Patent Office and the Courts… the approach has been often criticised as being inconsistent and contradictory to the EPC itself… In our view, adopting the EPC approach would create a significant degree of uncertainty as to how the section is to apply and which, in any event, is inherent in the EPO approach.

Adopting an approach comparable to the EPC and UK Patents Act is also likely to lead to unpredictability, as an interpretation of the “as such” clause by the European Patents Boards of Appeal has that computer programs are only patentable if they produce a “further technical effect” so as to render the claim allowable under article 52 of the EPC… The EPO approach has often been criticised in Europe as giving rise to unpredictability in that jurisdiction. Considerable costs have been incurred in dealing with and attempting to avoid the exclusion that was imposed in 1977…

So we are considering a choice between the possibly uncertain yet industry-accepted term “embedded computer program”, versus an approach proven to be uncertain, confusing, inconsistent, contradictory, unpredictable, and costly – as warned by the Australian patent attorneys.

Once again, the onus is on the New Zealand software patent proponents to explain why a discredited European-style exclusion, heavily criticised by our patent expert friends across the ditch, is in any way superior to the industry-supported exclusion that avoids all these problems.

What about European case law?

Another claimed source of “uncertainty” of adopting a “new” term (and thus not adopting the European approach) is that New Zealand Courts would be unable to call upon the body of European case law.

Well, the expert advice from our Aussie friends strongly suggests that is a good thing! Again I quote from the Institute of Patent & Trade Mark Attorneys of Australia:

For example, the UK Court of Appeal has said “The decisions of the EPO Boards of Appeal are mutually contradictory” and its approach in two decisions “is simply not intellectually honest”

So access to contradictory, intellectually dishonest, and maligned case law would be an advantage how, exactly?

What about UK case law? The leading UK case has been criticised by the Board of Appeal of the European Patent Office (EPO) as being “irreconcilable with the European Patent Convention”. Which is another reason for not going down the European path.

OK. But didn’t the Select Committee say “embedded software” was uncertain?

No. What they said was:

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.

And that is quite right. As noted above, and as Lord Denning expressed rather more eloquently, definitive definitions are generally impossible. Therefore, the Select Committee sensibly recommended a simple approach.

And that is what the industry-suported amendment preserves. The exclusion of patents for computer programs remains, but with an express carve-out to ensure patentabilty of inventions containing embedded software – not the embedded software itself. Consequently there is no need to determine whether software is embedded or not to determine whether it is patentable. No “uncertainty” arises: under the industry-supported amendment, no software would be patentable. It’s pretty simple. And it’s entirely consistent with the Select Committee’s unanimous recommendation.

On the other hand, the European-style exclusion (which as the Australian patent attorneys say is uncertain, confusing, inconsistent, contradictory, unpredictable, and costly) is entirely contrary to the Select Committee’s unanimous recommendation.

So where does this leave us?

Every conundrum has a solution, and in this case it’s the industry-supported amendment. This amendment:

  1. Preserves the Select Committee’s unanimous recommendation that software be excluded from patentability;
  2. Ensures that patents are still available for inventions containing embedded software, such as Fisher & Paykel washing machines; and
  3. Avoids the controversial, counter-productive and unwanted European “as such” proviso in the current clause 10A(2).

It is also consistent with the Government’s statements, consistent with what Fisher & Paykel proposed as recently as April 2012, consistent with industry-accepted terminology, and perhaps most importantly, it is what the New Zealand industry has loudly endorsed.

What’s uncertain about that?

11 thoughts on “Patents Bill – the embedded software solution

  1. So I could, as an example, acquire a patent for a dedicated device that tracks movements using an embedded program?

    Would that patent be infringed by a general purpose device that uses the same algorithms to provide motion tracking in firmware as a utility for applications?

    Or by an entirely software implementation on a general purpose computer?

  2. Hi Rich,

    Whether or not something infringes a patent is hugely fact-based. You need to go right down into the minute detail of the patent claims and the alleged infringement. Even then it can be highly subjective. The Apple v Samsung case is a good illustration.

    What the industry-supported petition is about is the granting of patents, not enforcement.

    Cheers,
    Guy

    • Guy,

      Actually, I think Rich makes a good point. After all, if I can obtain a patent by describing an invention in the form of an embedded system, but then potentially enforce it against infringements deployed in general-purpose devices, then the exclusion is too easily circumvented.

      A further concern is that this might come about through advances in technology. When Australia’s CSIRO obtained its patent on wireless LAN technology, the specification envisaged a hardware-based implementation, because that was the only practical way to implement the techniques (in particular the required fast Fourier transforms) at the time. A decade later, all of the processing required was well within the capacity of a general-purpose CPU programmed with a software-based implementation of the algorithms.

      The distinction between ’embedded software’ and whatever its opposite might be, and even the distinction between software and hardware, is not only uncertain, it is fluid. You say that proponents of software patents have not pointed to evidence of uncertainty. Well, I have had a go at it, and would suggest that evidence is to be found in the evolution of the industry over the past two decades. See http://blog.patentology.com.au/2012/09/my-software-my-choice.html

      I am also growing a little tired of reading how proponents of software patents are ‘mostly lawyers’, with the implication that their (our) position is driven primarily by financial self-interest, and/or that we are ignorant of the technical and commercial realities of software development. That is actually a pretty offensive suggestion, and it’s fallacious ad hominem reasoning anyway. I have a few years to go yet before I will have been a patent attorney for longer than I was an engineer, and my views are informed not only by my own prior experience, but also by the numerous clients I now represent who see significant value for their businesses in protecting their computer-implemented inventions through patents.

      You seem pretty passionate about the things you believe in, independently of whether or not they bring any financial reward. You are not alone in this!

      And finally, you would be wrong to assume that IPTA speaks for the entire Australian patent attorney profession. It rarely consults the wider membership before making submissions on these types of issues, so it probably does not always even represent its own members. It certainly does not speak for the minority of us who have chosen not to join. And while the European approach is not beyond criticism, IPTA’s characterisation is excessive, and was made in the context of arguing against a software exclusion altogether, and not in the context of comparing the European approach with some arbitrary alternative.

      Cheers,
      Mark

      • Well said Mark. Its not perfect, but its the best there is. If the EP legislature and judicial precedent is confusing, then the US is much worse!

        Also, bear in mind that the type and nature of software type inventions that have been adjudicated on in Europe is very varied – this is not a remotely homgenous field of inventions. The fact that only two of them were dubious is actually quite impressive.

        Also take into account that South Africa has a similar wording in its Patents Act, and that the judicial precedent around that can also be of assistance.

      • Thanks Mark,

        Re your comment:
        “I am also growing a little tired of reading how proponents of software patents are ‘mostly lawyers’, with the implication that their (our) position is driven primarily by financial self-interest, and/or that we are ignorant of the technical and commercial realities of software development.”

        I have not made those implications, but others may well have. However it is true that the primary proponents of software patents in NZ are lawyers, as evidenced by the submissions. In fact, it has been notable how many submissions and letters there have been from overseas lawyers.

        It is fair to point out – as a matter of fact – that some lawyers do have is a financial interest in software patents. That is not an accusation of improper motive, but it is a relevant point. For example I note that another lawyer (Scott) commented here on a later post:

        “Guy, I have no interest in reversing the exclusion. My IP practice does not involve filing patent applications, and I am not a patent attorney.”

        Which I take to mean that if he was in the business of software patents, then he might have an interest in reversing the exclusion – which is I think an honest point to make, but not one that I would suggest is improper.

        Re: “while the European approach is not beyond criticism, IPTA’s characterisation is excessive”

        I accept that members will often disagree, although i note that IPTA’s submission was expressly endorsed by the Australian Federation of Intellectual Property Attorneys too. So I would be a little surprised if both organisations were wrong on this point.

        Cheers
        Guy

        • Guy,

          Actually, I think that the fact that someone without a financial interest in software patents felt the need to make a point of the fact that he does not have a financial interest in software patents is a reflection of a real problem in the whole discussion! People with something of substance to say should be judged on their merits. They should not feel that they have to waste space pre-emptively defending themselves agains ad hominem attacks.

          Incidentally, it is my understanding that you could just about count on one hand the number of distinct individuals involved in preparing the IPTA and FICPI submissions. You must surely have some experience of professional bodies yourself which would give you some insight into how these things are done?!

          Mark

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  5. It’s a can of worms, and on balance, I disagree with both/all positions 🙂

    To me the problem lies not between embedded and non-embedded, or European or USA approaches, but with (1) the lack of definition of patent utility or minimum degree of inventiveness and (2) the very fast cycle times that occur in computer software development.

    Regarding (1), most patent law as I understand it is agnostic on utility. Any degree of utility, real or imagined, is acceptable. So long as there is marginal potential use, that’s fine. But put that in conjunction with (2) and you have a problem – it becomes a patent racein the same way there was once an arms race.

    All software is embedded, even if in a common desktop computer. So somebody could arguably still file and appeal and litigate their way to patenting a trivial click to the left followed by a click to the right, regardless of which clause or amendment passed. This serves nobody.

    I think we have to back away and look at point (1) rather than get hung up on the way point (2) interacts with it.

    Of course, that’s probably a bigger can of worms.

  6. I am of the opinion that under TRIPS, which the Minister cites as necessitating the “as such” exclusion, no software should be patentable.

    After writing to the Minister raising my concerns I got a boiler plate response that failed to address my concerns as the manager of New Zealand software development company.

    Here is my response to the Ministers secretary.

    ~~~~~~~~~~~~~~~~~~~

    This boiler plate response from the Minister does not address the issues I raised in my communication, as such. (As such in this context means “at all” rather than the SOP “as such” meaning of “but they can really”)

    The original unanswered questions to the Minister relate to the justification as listed in Supplementary Order Paper No 120 that the proposed changes are required under TRIPS.

    Articles 9 & 10 of TRIPS are crystal clear that software is to be treated as works of authorship not invention and protected as literary works. The limits of the protection under the treaty specifically exclude “ideas, procedures, methods of operation or mathematical concepts as such”.

    Further the objectives as specified in TRIPS Article 7; “The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.”

    There is agreement through out the global information technology community that the granting of software patents in any form stifle innovation through locking up ideas and methods for 20 years in most cases without so much as providing sufficient detail for person practiced in the field being able to replicate the “invention” let alone understand what the actual “invention” is given the legalese used in the patent application drafting.

    The Ministry has specified in the SOP that the TRIPS Treaty is the legal basis requiring this change, which is unanimously opposed by the domestic New Zealand software industry.

    The problem is that I contend the Ministry is misguided and is misreading the TRIPS treaty.

    Article 27 specifies; “Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.”

    Computer software under TRIPS is not a “field of technology”. Software is defined as works of authorship (not invention) under Article 10 the treaty specifies software in code or the object form “shall be protected as literary works under the Berne Convention”.

    If we take an example of a software related patent for a method of encoding an audio data stream into a compressed format for transfer through a mobile telephone GSM network and decoded on a receiving end so that it may be heard and understood clearly on the decoded end.

    1) Under the “as such” provision this will now be a patentable invention because it’s not the computer program “as such” that is invented it is the process of encoding and decoding audio data to be transmitted through the radio spectrum to remote locations. There are multiple parts a sender, a receiver, an intermediary transmitter, the generation and manipulation of radio waves through the air etc. The invention is not a computer program “as such”.

    2) (i) Under Article 10 of TRIPS the object code that runs on the mobile telephone that encodes the audio data stream originally is required to be protected under copyright. Under Article 9 of TRIPS the “idea, procedure and method of operation” contained in this computer program are not and are not intended to be covered by treaty protection.
    (ii) Under Article 10 of TRIPS the object code that retransmits the encoded data stream is required to be protected under copyright. Under Article 9 of TRIPS the “idea, procedure and method of operation” contained in this computer program are not and are not intended to be covered by treaty protection.
    (iii) Under Article 10 of TRIPS the object code that decodes the data stream on the receiving mobile device is required to be protected under copyright. Under Article 9 of TRIPS the “idea, procedure and method of operation” contained in this computer program are not and are not intended to be covered by treaty protection.

    3) The SOP No 120 is creating legislation which will allow patents to be granted that is in violation of Articles 9 & 10 of TRIPS. The SOP will allow the ideas, procedures and methods of operating computer programs to be protected as patentable subject matter where the authors of TRIPS intended for these to be protected by copyright and the ideas, procedures and methods of operation of these computer programs to be free from restrictions.

    Further under Vienna Convention on the Law of Treaties (1969) Article 31 (1) “A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose.”

    Allowing the “ideas, procedures and method of operation” of computer programs to become patentable subject matter is not interpreting TRIPS in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its objective and purpose.

    My question to the Minister is how can he in good faith be persuaded to adopt the narrow interpretation of Article 27 where doing so will be violating Articles 9 & 10 of the very same treaty in addition to objectives listed in TRIPS Article 7?

    My follow on question to the Minister is how he can in good faith ignore the principals Vienna Convention on the Law of Treaties (1969) Article 31 and fail to apply TRIPS in context and in light of its objective and purpose?

    Yours sincerely,

    Robert Anderson
    Director
    Levide Capital Limited

  7. Rob Anderson

    [Articles 9 & 10 of TRIPS are crystal clear that software is to be treated as works of authorship not invention and protected as literary works. The limits of the protection under the treaty specifically exclude “ideas, procedures, methods of operation or mathematical concepts as such”.]

    [Computer software under TRIPS is not a “field of technology”. Software is defined as works of authorship (not invention) under Article 10 the treaty specifies software in code or the object form “shall be protected as literary works under the Berne Convention”.]

    Your interpretation of article 10 of TRIPS is pretty unique. And I expect it would find little support in a TRIPS dispute. There is nothing in TRIPS that says that if there may not be different rights for overlapping subject matters. Trade marks and design registrations are routinely granted for subject matter the same as or closely related to what has been patented. The 1978 UPOV Convention prohibited the granting of a patent and a plant breeder right for the same variety, but that prohibition was removed from the 1991 UPOV convention. And section 74 of the New Zealand Copyright Act recognises that copyright subsists in patent drawing so long as the patent remains in force.

    Part II of the TRIPS agreement is divided into 8 sections, each of which deals with separate areas of law. Section 1 of part II sets out the minimum standards that the copyright laws of member states have to meet. Section V of part II sets out the minimum patent standards that the patent laws of member states have to meet. But to say that copyright protection has to be provided for computer software (as article 10 does) has no relationship to what has or does not have to be protected by patents under article 27 (in section 5 of part II).

    The reason for article 10 was that in the 1980s and early 90s there was a debate over whether software was or was not a literary work protectable by copyright. There was even a High Court of Australia decision that software was no more than a collection of electronic pulses that were not readable by humans and was therefore ineligible for copyright protection. The wording of article 10 was intended to put copyright eligibility for software beyond doubt. It was not intended to limit the article 27 inclusion of all fields of technology.

    A more meaningful test for determining the patent eligibility of software is whether the software is an end in itself or a means to the end of implementing a software controlled innovation. The former is not patent eligible – the latter is.

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