QC confirms “as such” will allow software patents – part 2

The first part of this post is here.

Yesterday, top IP lawyer Andrew Brown QC published a very timely article confirming that software patents would still be available in New Zealand if the Patents Bill retains the controversial “as such” proviso. Accordingly, there is no longer any question that “as such” must be removed, if the Government’s intention is to exclude software patents (as it claims).

Assuming that is the case, the rest of Brown QC’s thoughtful and well-referenced discussion on the possible workability of the “as such” proviso in the Bill is perhaps somewhat redundant to the debate, although if the Government does wish to allow software patents to continue – contrary to its stated intention – and thus retains the proviso, then I respectfully agree with Brown QC that UK case law provides a possible “pathway” and “signposts” by which software patents would continue to be granted in New Zealand.

Unfortunately, Brown QC’s article contains several unrelated (and in context, minor) errors which I must address given that I have referred to the article.

First, regarding the industry-supported amendment (which I will refer by its official name, SOP 123), the article says:

The open source group has strongly argued against this wording – contending instead that any “carve out” from the ban on computer programs should be limited to embedded software.

… The open source group has been seeking what they hope is a narrow exception to the ban on computer programs i.e. embedded computer programs only

This is incorrect. No “carve out” or “narrow exception” for patents on embedded software has been proposed by the petition or SOP 123. What is sought is an exclusion on all software. For clarity, I set out what will be the full clause 10A, if SOP 123 is adopted:

10A Computer programs

(1) A computer program is not an invention for the purposes of this Act.

(2) Subsection (1) does not prevent an invention that makes use of an embedded computer program from being patentable.

Under this putative clause 10A, no software is patentable, full-stop. That is what sub-clause (1) achieves, and what the petition has called for. Sub-clause (2) does not limit clause sub-clause (1). It simply ensures that an invention (which software cannot be, per sub-clause (1)) that makes use of embedded software is not somehow excluded by virtue of sub-clause (1) (which is what the Minister said the current clause 10A(2) was supposed to do). Thus, contrary to the article, there is no “narrow exception” or “carve out from the ban on computer programs” in either sub-clauses (1) or (2). All software is caught by the exclusion in sub-clause (1) – clear, simple, and industry-supported.

Second, and related to the first, the article appears to conflate software, with inventions containing software. For example, it also says that SOP 123 “would, if adopted by Parliament, see patents allowed only for embedded computer programs“. This is incorrect. SOP 123 would not allow patents for any computer programs – see above. But it would allow (or not prevent) patents for inventions that make use of embedded software, providing all other criteria are met. The rationale is obvious: something that is otherwise patentable should not suddenly become unpatentable simply because it makes use of some software (and vice-versa). SOP 123 is therefore completely consistent with the Minister’s own words that “inventions that make use of embedded computer programs will be patentable” (to those who have wondered where the SOP 123 wording came from, there’s your answer – the good Minister himself!).

Third, the article continues what now seems to be a habit of IP lawyers of referring to anyone opposed to software patents as being part of an “open source group” or similar (e.g. see quote above, and here, here, here, here, here, etc). This is incorrect (or not entirely correct), and has been since at least the 2009 Commerce Committee hearings. The petition (on which SOP 123 is based) is indeed supported by the NZ Open Source Society, but also by the Institute of IT Professionals (I am a member), InternetNZ, NZRise and numerous other organisations, including New Zealand’s two largest software exporters, Jade and Orion Health (neither of which to my knowledge are members of any “open source group”, but I am happy to be corrected on that), and personnel from Xero. Dozens of smaller “closed-source” companies and developers have also signed, among over a thousand co-signers, some expressly noting that they are not open source developers. I myself support the petition and SOP 123, and can confirm that I am not now, nor have I ever been, a member of any “open source group”, although I do support some activities of NZOSS.

I add that none of these errors detract from the article’s legal commentary on how a New Zealand Court might interpret the “as such” proviso (if it is retained) to continue granting software patents under the new Act, and may be seen as minor in that context. But given that I have cited the article, it is necessary that I address them.