A patent is a set of exclusive rights granted over any device, substance, method or process that is new, inventive and useful (an Invention), for a limited time after a successful application process. Similar to trade marks, a patent is a registrable intellectual property right granted by the country of registration. An applicant for a patent has to disclose the substance of the invention, making the information available to the public through registration. Consequently, some inventors make the business decision not to disclose their patents, instead opting to keep their invention confidential as a trade secret.

Whilst a patent grants an exclusive, time-limited monopoly over an Invention, there are exclusions to what can be protected under patent. Registration will only be granted to an Invention that is a patentable subject matter. This means the subject matter of the patent must have a manner of manufacture in order to be a patentable subject matter. A subject matter must have an inventive step (for a standard patent) and an innovative step (for an innovation patent). However, not everything is patentable. Below we discuss what subject matters or technologies cannot be patented.

Excluded subject matters:

The Patent Act contains expressed exclusions as to what are not patentable subject matters. These are:

  • human beings;
  • biological processes;
  • for innovation patents: plants, animals, and the biological processes for the generation of plants and animals;
  • subject matters which are contrary to the law. For example, an application to patent an explosive safe to kill or maim a burglar, and a hybrid human-cow, were rejected (amongst other reasons) for being contrary to the law; and
  • anything that is generally inconvenient to have a patent over.

Other controversial subject matters:

In addition to the excluded subject matters under the Patent Act, there are other subject matters where a patent may not be granted, or a granted patent may be revoked. These include:

  • discoveries;
  • agricultural and horticultural processes;
  • computer programs;
  • schemes and methods;
  • biotechnological inventions; and
  • methods of treatment of the human body.

A notable case in this area is Associations for Molecular Pathology v Myriad Genetics Inc, which challenged the validity of patents covering the genes most commonly associated with breast cancer, BRCA1 and BRCA2. In this landmark American case, it was eventually held that mere isolated genes found in nature are not patentable.

The situation is somewhat different in Australian law. When a similar challenge was brought to the Federal Court of Australia (D’Arcy v Myriad Genetics Inc [2014] FCAFC 115), the court unanimously held that the manipulation of a gene to create something that is not naturally occurring may be eligible for a patent, and rejected an application to appeal. However on 13 February 2015, the High Court of Australia granted special leave to hear an appeal on the Full Federal Court’s decision. The High Court’s decision is expected in late 2015.

Conclusion

There are different avenues and methods to protecting your invention, and securing a patent is one of them. Unfortunately, securing and protecting a patent is not a simple or straightforward process. This process can be more complex and lengthy if you are looking to secure your patent in multiple states or jurisdictions. Our team of IP lawyers and patent attorneys have extensive experience in this area and would be happy to assist with protecting your invention. To speak with a member of our team today, contact LegalVision on 1300 544 755.

Lisa Lee

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