On 14th May 2013 Supplementary Order Paper 2013-237 was made for the Patents Bill 2008. The main purpose of SOP 2013-237 is to redefine the boundaries of patentability for computer programs. Prior to any SOP’s the following sub-clause 3A was added to clause 15 of the Patents Bill 2008, which covers other exclusions from patentability:
(3A) A computer program is not a patentable invention.
This drew both local and international criticism. Subsequently, SOP 2012-120 introduced the following clause 10A to the Patents Bill 2008:
10A Computer programs
(1) A computer program is not an invention for the purposes of this Act.
(2) Subsection (1) prevents anything from being an invention for the purposes of this Act only to the extent that a patent or an application relates to a computer program as such.
An opposition party introduced SOP 2012-123 in response to that, proposing amending 10A(2) to:
(2) Subsection (1) does not prevent an invention that makes use of an embedded computer program from being patentable.
The proponents of SOP 2012-123 considered it to be clearer in demarcating what is patentable, despite a computer program not being an invention for the purposes of the Bill.
SOP 2013-237 replaces clause 10A with a more extensive provision complete with examples. It still retains the ‘computer program as such’ terminology, but it would also change the way computer programs are prevented from being patentable. Namely, subclause 10A(1) states that a computer program is not an invention and not a manner of manufacture. Under the new sub-clause 10A(1) in SOP 2013-237 clause 15(3A) is redundant, since computer software is ineligible as a patentable invention under clause 13 on account of not being a manner of new manufacture.
Sub-clause 10A(2) retains the ‘computer program as such’ condition of sub-clause 10A(2) of SOP 2012-120, while extending its application to a manner of manufacture. This approach is also more consistent with English precedent and makes it clear that where the actual contribution of an invention lies solely in it being a computer program, it is ineligible for patent protection.
Sub-clause 10A(3) clarifies that a patent or an application relates to a computer program as such if the actual contribution made by the alleged invention lies solely in it being a computer program. The effect of this approach is that it will not be possible to obtain a patent for an invention that involves or makes use of the computer program if the sole inventive feature is that it is a computer program. A process for automatically completing the legal documents necessary to register an entity is given as an example of an invention involving a computer program that is prevented from patentability.
Patents can be granted for inventions making use of or comprising a computer program, including an invention involving embedded computer programs. However, this requires that the actual contribution lies outside the computer or, if it affects the computer itself, is not dependent on the type of data being processed or the particular application being used. A claim to a better method of washing clothes using an existing washing machine that runs according to a new computer program is provided as an example of the use of a computer program that would not be considered to be a computer program as such.
Subclause 10A(4) provides what the Commissioner or Court must consider in determining the actual contribution made. Namely:
(a) the substance of the claim (rather than its form and the contribution alleged by the applicant) 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:
(d) the advantages or benefits of solving or addressing the problem or other issue in that manner:
(e) any other matters the Commissioner or the court thinks relevant.
Compliance with the new 10A would be a step of examination as well as grounds for opposition or revocation if enacted.
