Australia and New Zealand may be close geographically and culturally, but when it comes to patent protection, their paths have started to diverge. When talking to clients, whether in Australia or elsewhere, I usually mention the possibility that they could also pursue patent protection in New Zealand. In those discussions, it often becomes clear that the client assumes the patent provisions of the two countries are, by and large, synonymous. This is not so. While harmonisation of the IP laws of these South Pacific cousins continues to be the subject of much discussion on both sides of the Tasman, the reality of achieving this seems (sadly) increasingly unlikely in the context of recent developments.

While the basis of what constitutes patentable subject matter in both Australia and New Zealand has a common ancestry – namely the old “manner of manufacture” test from the Statute of Monopolies, which dates back to 1623 – the fundamentals underpinning any consideration of patentable subject matter have parted ways and look set to continue to do so.

Questions of patentable subject matter tend to arise only in contentious areas. Two such areas of recent controversy are methods of human treatment and computer software.

As I mentioned on NewLegal Review last month, Australia retains quite a flexible and broad-minded approach to what is patentable. Methods of human treatment are patentable, as are business methods and pieces of software so long as there is evidence of an end result with economic significance.

In contrast to the Australian position, back in 2004, Pfizer failed in New Zealand to patent a method of treating psychotic disorders using a new compound. The court found against the method claims on moral grounds, and ruled that the allowability of claims to such methods was a matter for parliament. Since then, a proposed new Patents Bill has been working its way through the New Zealand legislature and, in the Bill, it is clear that methods of treatment will remain unpatentable. This is based on a specific provision that "methods of medical treatment of humans by surgery or therapy and methods of diagnosis practised on humans" are excluded from patent protection.

However, as is the case in Australia, Intellectual Property of New Zealand (IPONZ) is now accepting so-called Swiss-style claims. An extensive set of guidelines, updated by IPONZ in 2009, sets out the criteria for what is acceptable and unacceptable in this regard (visit www.iponz.govt.nz for details).

Much more recently, New Zealand's minster for commerce stated that computer programs will also be excluded from patentability in the country’s new Patents Act, but that embedded software will be allowed. This statement followed an unexpected announcement from the New Zealand Commerce Select Committee in March 2010, recommending that the draft Bill should also specify that a computer program is not patentable.

In the wake of the controversy that followed, the minister appears to have attempted to take a midway position that prevents software patents, but allows patents on embedded software – eg, software that runs on special-purpose devices such as mobile phones and medical equipment. IPONZ has been instructed by the minister to prepare guidelines following this decision. So it will be interesting to see how IPONZ meets the challenge of preparing guidelines that allow the patenting of embedded software in light of a ban on the patentability of computer programs.

As an Australian patent attorney also entitled to practise in New Zealand, I watch the progress of the New Zealand Bill and preparation of the guidelines with interest. In the meantime, suffice to say that patent laws in Australia and New Zealand remain a long way from being harmonised – much like our accents and the performance of our rugby teams.


Brett Lunn is managing partner at FB Rice & Co in Sydney