Requirements for patentability

6.4 For an invention to be protected by an Australian patent, it must satisfy the requirements for a ‘patentable invention’ in s 18 of the Patents Act.[2] Section 18 provides that a patentable invention is one which:

  • is a manner of manufacture within the meaning of s 6 of the Statute of Monopolies 1623 (Statute of Monopolies);

  • is novel when compared to the prior art;

  • involves an inventive (or innovative) step when compared to the prior art;

  • is useful; and

  • has not been secretly used in Australia before the priority date by or with the authority of the patent holder.[3]

6.5 The Patents Act expressly excludes certain categories of subject matter from patentability, and grants the Commissioner of Patents the discretion to refuse a patent application for other types of inventions. Chapter 7 discusses these exclusions.

6.6 For reasons outlined later in this chapter, the ALRC does not consider that inventions involving genetic materials and technologies raise issues that warrant major changes to the legislative requirements for patentability. Moreover, as a general proposition, the ALRC does not consider that the patentability requirements should apply to genetic inventions differently to the way in which they apply to inventions involving any other type of technology. Inventions involving gene patents do, however, highlight issues about the way in which the usefulness of an invention is assessed. The ALRC, therefore, recommends specific reforms to clarify the application of the usefulness requirement to all types of inventions.

[2] ‘Invention’ and ‘patentable invention’ are defined in sch 1 of the Patents Act 1990 (Cth).

[3] The application of this requirement (commonly referred to as ‘secret use’) in the context of gene patents is not materially different to any other type of technology and thus will not be considered in any detail in this chapter. For judicial consideration, see Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75.