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Patentability of software in NZ - draft examination guidelines

21 December 2010. Posted by Jonathan Lucas.

IPONZ has recently published draft guidelines on how patent applications involving software will be examined under the new Patents Act.

Earlier this year we reported the Minister of Commerce's decision that computer programs will be excluded from patentability in the new Patents Act. This followed the recommendations of the Commerce Select Committee, despite industry opposition to the exclusion. In his announcement, Simon Power (the Minister of Commerce) tasked IPONZ to draft guidelines that would allow inventions for "embedded" software.

The draft guidelines were published on Monday 20 December 2010 and are available from the Ministry of Economic Developments website - Ministry of Economic Development's draft guidelines.

The Ministry has invited submissions on the draft guidelines, which need to be filed by 11 March 2011.

There will no doubt be in-depth scrutiny of the guidelines early in 2011. James & Wells will provide more thoughts once we have had a chance to consider them in more detail.

Until then we would be interested to hear your views - do you think the guidelines clarify the issues for applicants? Do they exclude too much technology from patentability or too little? Let us know by contacting Jonathan Lucas.

Here are our initial reactions to get you thinking:

  • The guidelines were intended to cover the examination of patent applications for embedded software. How can they successfully do this when they don't use the term "embedded" once?
  • The proposed examination approach of deciding whether or not a software-related invention is patentable follows that of the UK, yet the wording of the UK law is different to that proposed in the Patents Bill. What problems might this create?
  • IPONZ guidelines have been ignored by the courts in the past because they have no official status ('Lost in the dark' article). How much influence will the guidelines have in a court of law?