Thomson Reuters Enterprise Centre GmbH [1] is the first decision from the Intellectual Property Office of New Zealand (IPONZ) on the patentability of a software-based invention under the Patents Act 2013. The decision comes more than six years after the commencement of the Act, which overhauled New Zealand’s patent system and (among other things) introduced additional patentability criteria for those seeking to protect software-based inventions.
Section 11 of the Patents Act 2013 specifies that a patent or patent application with a claim relating to a computer program ‘as such’ is not an invention and thus unpatentable in
New Zealand.[2] A claim relates to a computer program ‘as such’ if the actual contribution made by the alleged invention lies solely in it being a computer program [3].
In Thomson Reuters, the alleged invention as claimed related to a computer implemented method for classifying data items into categories, using swipes on a touch screen by a user. It also involved generating updated visual representations denoting which category each data item was classified into.
In identifying where the actual contribution of the alleged invention lay, the Commissioner applied the provisions set out under Section 11(4) of the Act [4], specifically looking at:
a) the substance of the claim and the actual contribution it makes,
b) what problem or other issue is to be solved or addressed,
c) how the relevant product or process solves or addresses the problem or other issue, and
d) the advantages or benefits of solving or addressing the problem or other issue in that manner.
It was held that the substance of the claims related to only to the very specific use of touch screen interfaces to perform categorisation of data items. The problem to be solved was to remove the need for users to rely on a standard computer mouse and keyboard, and the alleged invention solved this by providing a user interface for the classification on a touch screen device, which was controlled through swipe gestures.
The Commissioner noted that the swipe gestures employed were standard and well known. The alleged invention effectively substituted mouse and keyboard interactions for swipe gestures which were built into a touch screen device. The Commissioner held that because there was no improvement on the conventional in-built and well-established swipe gestures used, the actual contribution made lay solely in it being a computer program. Thus, the alleged invention was deemed unpatentable in New Zealand.
It appears that Section 11 has been applied correctly applied in this case. The touch screen and server used are conventional, and swipe gestures are a commonly known input for touch screens. The only novel aspect of the alleged invention lay in the computer program that generated the interface and processed the data based on the user inputs.
Comparison with European and UK provisions
In forming his decision, the Commissioner compared the provisions concerning software-based inventions in the New Zealand legislation to those administered under the European Patent Office, and the UK Intellectual Property Office. Specifically, he noted that the computer program ‘as such’ language of Section 11 is similar to the language of the computer programs exception in Article 52 of the European Patent Convention (EPC).
However, the Commissioner noted that the UK and EPO case law precedents are relevant but should only be applied in New Zealand with caution. A similar objection has been raised during examination of the corresponding European patent application [5].
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1. Thomson Reuters Enterprise Centre GmbH [2020] NZIPOPAT 7 (17 December 2020).
2. Patents Act 2013, s11(2).
3. Patents Act 2013, s11(3).
4. Patents Act 2013, s11(4).
5. European patent application EP3465415.