Software patents and TRIPs – no worries

The software patent debate in New Zealand is, in principle, over – it’s just a question of whether we want clear law (achieved by the industry-supported amendment) or proven-bad law (the “as such” amendment).

One issue that had been raised by proponents of software patents when attempting to (unsuccessfully) dissuade the Commerce Committee from recommending to exclude software patents was whether a software patent exclusion might cause issues with New Zealand’s obligations under article 27 of TRIPS (an international IP treaty to which New Zealand is a party).

The advice from the MED report of October 2010 was clear: no software patent exclusion, anywhere in the world and in any form, had ever caused TRIPS problems. As the report said:

  • It is notable that although there are many countries whose patent legislation includes some sort of exclusion for computer programs, to date, there has been no attempt to challenge these through the WTO dispute settlement process
  • There have been no WTO decisions regarding this aspect of Article 27.1…”;
  • … there are a growing number of countries that expressly or indirectly exclude computer programs from patentable subject matter… It follows that, to the extent there can be said to be a consensus on this issue, computer programs cannot definitively be said to be within a “field of technology”, and there is no obligation for TRIPs signatories to provide patent protection for them.

And this is consistent with evidence from around the world.

So there can be no suggestion that New Zealand would be going out on a limb by excluding software patents, when many countries already do so and there has never been so much as a TRIPS-based challenge, let alone a TRIPS/WTO compliance issue.

Just how many countries have software patent exclusions? A detailed 2010 WIPO study listed 64 countries as excluding software from patentable subject matter. These include countries using the problematic “as such” language, as well as countries with clear exclusions for software patents such as the industry-supported amendment will achieve (see Annex II of the study).

It is reassuring to have this confirmation that an exclusion of software patents has never given rise to any TRIPS issue. Those who might still claim that it does raise issues will therefore need to put forward good evidence to substantiate such claims, if they wish to counter the documented history of no TRIPS-related issues ever arising from a software patent exclusion.

It is also important to note that clause 10A(1) – which the industry-supported amendment preserves – was itself re-worded to ensure even greater consistency with TRIPS (if that was perceived as needed). Rather than excluding a computer program from being a patentable invention (the original Committee Bill), new clause 10A(1) clarifies that a computer program is not an invention for the purposes of the Bill. This approach is available – and probably preferable – because TRIPS does not define “inventions” and therefore countries are able to define it for themselves, as many have done.

So clause 10A(1) raises no issues under TRIPS, is consistent with international practice and experience, and – provided the problematic as such clause 10A(2) is replaced by the industry-supported amendment – is industry supported, and accurately reflects the intention of the Committee.

2 thoughts on “Software patents and TRIPs – no worries

  1. The alleged “as such” uncertainty has been misleadingly over-stated. I suggest how the EPO Board of Appeal has interpreted “as such” over the years since the Vicom case (embedded system OK) is unlikely to influence a NZ court. The common law doctrine of precedent doesn’t allocate any persuasive value to decisions of civil law courts, let alone mere tribunals like the EPO BOA. On the other hand the considerably more restrictive approach taken by the UK courts which did not follow BOA decisions will have strong persuasive value in NZ.

    • Thanks Ken,

      It does seem there is a divergence of opinion about just how uncertain “as such” is. The Institute of Patent & Trade Mark Attorneys of Australia and Australian Federation of Intellectual Property Attorneys submitted that it was unclear whose approach would be followed.
      The broader problem is the term “as such” is ambiguous by its nature – this is what WIPO’s own 2010 study says about “as such” expressly in the context of software patents:

      Given the ambiguous nature of the proviso, it is not surprising that it lent itself to a number of different and sometimes conflicting styles of interpretation.

      So when WIPO itself (or its own expert study) describes the term as ambiguous by nature, I agree with the Australian view that it is difficult to say how it might be interpreted.


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