Patentable Subject Matter: What Can I Patent?

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Table of Contents

• What Is a Patent?
• What are the Threshold Requirements for Getting a Patent?
• Statutory Requirements
• Excluded Subject Matter
• Other Controversial Subject Matters
• Key Takeaways
• Frequently Asked Questions

A patent is a form of intellectual property (IP) right that a government authority grants to the owner or inventor of an invention. You can only receive a patent for an invention that is patentable subject matter according to the law. However, not everything is patentable subject matter. This article discusses: 

• the criteria in Australia that you must satisfy to receive a grant of patent; and 
• what subject matters and technologies you can and cannot patent.

What Is a Patent?

A patent is a set of exclusive rights over any device, substance, method or process that is new, inventive and useful. However, a patent only lasts for a limited time after a successful application and grant process. Patent protection is available for any invention, whether a product or a process, in all fields of technology, provided that the invention: 

• is patentable subject matter;
• is new;
• possesses an inventive or innovative step; and 
• is capable of industrial application. 

A patent provides the owner or the inventor with exclusive rights to the process, design or product in exchange for a comprehensive disclosure of the invention. Therefore, an applicant (i.e. the owner) has to disclose the substance of the invention. As a result, this information will ultimately become available to the public. 

What are the Threshold Requirements for Getting a Patent?

IP Australia administers the Australian patent system. If you want to obtain a patent in Australia, you must submit a formal application (a patent application) to IP Australia and pay the relevant fees. For IP Australia to grant the patent application as a patent, a patent examiner must first examine the patent application to determine if it meets the legislative requirements. The patent examiner will consider three key requirements during examination. These are:

1. whether there is patentable subject matter (the subject matter of the patent must be a manner of manufacture in order to be a patentable subject matter);
2. the substance of the subject matter (you can only receive a patent grant for true inventions, which must be novel and inventive); and 
3. the disclosure requirement (you must draft your patent application carefully to ensure it provides a clear and complete disclosure of the invention, because the patent examiner will scrutinise the form of your patent application closely. In effect, the patent application you file to describe your invention will be examined as well as the invention itself. If you fail the disclosure requirement, your patent application may never proceed to grant because this requirement is weighted the same as the other patentability requirements. Patent applications are usually drafted and prosecuted by IP professionals such as patent attorneys as they are specially trained in how to draft a patent application to meet the strict legal requirements.

Statutory Requirements

To receive a grant of a patent in Australia, an applicant must satisfy the statutory criteria set out in the Patents Act 1990 (the Act). For standard patents, the subject matter of the patent must:

• be an invention;
• have a manner of manufacture;
• be novel;
• have an inventive step;
• be useful; and
• not secretly in use.

Excluded Subject Matter

Further, the Act contains express exclusions as to what is not patentable subject matter. For example, these include:

• human beings;
• biological processes for the generation of humans; and
• subject matters which are contrary to the law.

Other Controversial Subject Matters

In addition to the excluded subject matters under Act, there are other subject matters where IP Australia may not grant a patent or decide to revoke a patent.

For example, these include:

• discoveries;
• intellectual processes;
• some agricultural and horticultural processes;
• computer programs;
• native genetic information; and 
• business schemes and methods.

Key Takeaways

There are different avenues and methods to protecting your invention, including securing a patent. Unfortunately, however, securing and protecting a patent is not a simple process.

Frequently Asked Questions