July 28, 2013

What You Can Patent

The holder of a patent over an invention has the right to exclude third parties from exploiting that invention. While patents are granted by the government, it is the patent holder’s responsibility to enforce its patent against other parties.

THE CRITERIA FOR A PATENT

Patentable inventions can take the form of a process, method, substance or device. In order to be patentable, an invention must satisfy the following criteria under Australian law. An invention must be:

  • more than a natural phenomenon;
  • undisclosed;
  • an “inventive step” or an “innovative step”;
  • useful; and
  • not previously used in secret.

NOT A NATURAL PHENOMENON

“Manner of Manufacture” is the legal language used by the courts in Australia to describe an invention that results from human activity. In other words, an invention cannot also be called a natural phenomenon. The discovery of a particular biological cell process or law of physics, for instance, would not satisfy this requirement.

UNDISCLOSED

An invention must also be “novel”, that is, not publicly disclosed anywhere in the world before the date of the patent application. Disclosure refers to any public release of the invention (for instance, selling the invention) or statements made about the invention in a public forum. While Australian law provides for “grace periods”, it is advisable to file a patent application before any kind of disclosure.

INVENTIVE OR INNOVATIVE STEP

In Australia, there are two kinds of patent:

  • the standard patent, which requires an “inventive step”; and
  • the innovative patent, which requires an “innovative step”.

An innovative step is a lower threshold of advance than an inventive step. Australian courts consider:

  • an “inventive step” to be more than an “obvious” step brought about by a person with technical knowledge in the field of the invention; and
  • an “innovative step” to be an improvement that makes a “substantial contribution” to what is currently known in a field.

USEFULNESS

A patentable invention cannot be useless, and must have a specific and realistic use.

NO SECRET USE

In Australia, an invention must also not have been secretly used in Australia before the date of filing the patent application.

TAKEAWAY

Patents are a highly complex and technical area of the law – each element of the criteria above represents a major body of law with its own qualifications and exceptions. That said, the requirements described are a good way to start thinking about whether or not you should try to patent your invention.

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