The Reason TPP Does Not Discuss “Software Patents”

The Press Release by the New Zealand Labour Party “Govt must clarify if software patents are in TPP” that Scoop published on 14 October has many misconceptions about software patents as well as NZ’s 2013 Patent Act.

The press release confuses “software patents” with “software-based inventions”. This confusion has existed for many years around the world, including in the United States.

In the US and in NZ, one can copyright a computer program to guard against unauthorized copying. But that copyright has absolutely no connection or relationship to a software-based invention. This is not a subtle distinction, and I and others have written extensively to try to make lawmakers, the media and others recognize that difference.

Recently I sent a letter sent to Tim Groser, Minister of Trade in which I thought it important for NZ to review its 2013 Patent law in which it attempted to distinguish between A process that may be an invention from A process that is not an invention. Your current 2013 law requires the software (the process) to be inventive but tied to a manner of manufacture, e.g., a washing machine. In the US, there is absolutely no such requirement. My letter which follows tries to explain why a true invention need not be tied “to a manner of manufacture”. The letter also reviews current US law as it relates to software-based inventions.

My letter follows…

Dear Mr. Groser,

I’m writing this letter to you to provide some arguments for how New Zealand should interpret its 2013 Patent Act. The Act should allow all real inventions to be patented purely on the substance of the claim, the actual contribution it makes and the problem it solves.

Back in May 2013 when the NZ Patent Act 2013 was being developed, I sent a letter to your former Commerce Minister Craig Foss. Using several examples I made the following point … “You should be able to get a patent on a true invention and the fact that computer software is involved should not disqualify the invention from patent protection”.

Several weeks later I received a letter from Mr. Foss stating “I agree with you that a person should be able to get a patent on a true invention and the fact that an invention may employ a computer program should not automatically disqualify the invention from patent protection”.

About a month later a NZ magazine published my article Opinion: Why banning pure software inventions from patent system makes no sense. In that article I gave an example of technology where the true invention was implemented in “pure software”. It was Microsoft Research’s Speech Recognition Breakthrough for the Spoken, Translated Word which in real time converts one’s spoken language to another spoken language while preserving the unique cadence of the speaker’s voice. More on this invention later.

I recently read Ian Taylor’s 10 August 2015 letter to you. He expressed a strong interest in not seeing the current NZ patent law changed because he believes that it could impede the growth of the software industry. It is unclear whether Ian Taylor wants NZ to ban all “software patents”. And it is unclear whether he would want to ban Microsoft’s s Speech Recognition invention just because the invention only used software to achieve its breakthrough result.

I also read an August 19th article How New Zealand's software patent ban can survive the TPP which stated…

“Officials give assurances there will be no changes to software patents, ISP liability and parallel importation”

“The new Patents Act, passed in 2013 with resounding support in Parliament in a vote of 117 to 4, didn't say software couldn't be patented - it said software was not an invention. It's a subtle but important distinction.”

Is the writer correct in his interpretation? I agree that software (a program) is not an invention. Software, just like electronic circuits, or steam, or solar energy, or gears, or rubber bands — to name a few — is only a means to an end. In the US under the USPTO long time guidelines one receives a patent only if a) there is an invention b) if there is a proper Specification (an adequate disclosure to one skilled-in-the-art) and c) the so-called invention in the patent application is not abstract and not obvious.

In both NZ and US laws, only inventions can be patented. But unlike NZ, in the US there is no requirement that an invention that has software in its Specification also control an external device like a washing machine.

There is also confusion about the term “software patents”. This confusion has existed for many years around the world, including in the United States. But in the 2014 historic US Alice vs CLS Bank Supreme Court decision (and in the many recent lower Court decisions that followed that decision) there is a much better understanding of what is patentable, and what is not, as it relates to software descriptions in the Specifications section of a US patent application. The Court wrote: that “inventive concepts” are the basis for a patent and that “improvements to another technology or technical field” and “improvements to the functioning of the computer itself” were examples of patentable subject matter. The justices went on to state that their position is consistent with an earlier 1981 Diamond v Diehr Supreme Court decision. On page 13 in the Alice brief they wrote “…the claims of Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer”.

Your 2013 Patent Act states…“A computer program is not an invention and not a manner of manufacture for the purposes of this Act.” It also states that what the Commissioner and/or the Courts are interested in is a) the substance of the claim; b) the actual contribution it makes; and c) the problem it solves.

Those statements are consistent with the US Patent law. It is well recognized in the US that computer programs are only copyrightable. But it is unclear in the examples given in the 2013 Patent Act if the NZ court and your Patent Commissioner will reject real inventions if the proposed implementation is a “pure software” implementation. In the US a software implementation” is described in the Specifications Section of the patent application using text, high level logic charts and appropriate diagrams. In the US, a computer program should never be included in the patent application, and there is no requirement that a computer program implementing that invention even existed.

Your NZ 2013 Patent Act law is only different from the US law in how it to tries to distinguish A process that may be an invention from A process that is not an invention. Your law requires the software (the process) to be inventive but tied to a manner of manufacture, e.g., a washing machine. In the US, there is absolutely no such requirement.

I hope New Zealand will interpret its patent law so as to be consistent with US Patent law and focus on the substance of the claim, the actual contribution it makes and the problem it solves.

Respectfully,

Martin Goetz

Holder of the First US Patent in 1968

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