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When is an invention patentable?
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In order to be considered ‘patentable’, inventions must meet certain criteria.
As explained below, in Australia a patentable invention must be both novel and inventive (for standard patents) or innovative (for innovation patents). Similar criteria are applied in other countries and regions, although sometimes with different interpretations resulting in variations in what is patentable.
Patents may only be obtained in respect of certain subject matter. Patents cannot be used to protect purely literary or artistic works. A discovery or idea that has no commercial application is not considered patentable subject matter. However, a machine or product or process that embodies or uses a discovery or idea may be patentable subject matter.
For example, if you discover the existence of gravity, the patent system will not operate to give you an exclusive right to that natural phenomenon. But if you take that discovery, and develop a filtration apparatus or method that uses gravity to separate one medium from another, the patent system can be used to protect the filtration apparatus or method.
Generally, patentable subject matter includes devices, products, processes, methods, apparatus, machines, chemical compositions and many biological products, computer hardware and software, and some business methods (typically those in which a computer is used to carry out a series of calculations or processing steps in the performance of the business method).
It is important to understand the patentability criteria applied in each country or region in which patent protection is sought.
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Novelty
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The test for novelty differs from one patent jurisdiction to another. However, in most cases, for an invention to be considered novel, there must have been no disclosure of it anywhere in the world prior to the filing of a patent application. Any non-confidential act that discloses all of the features of the invention, before a patent application has been filed – made even to a single person, through documents, demonstration or through the sale of a sample of the product – could destroy the novelty of the invention, making it unpatentable.
A few exceptions to the ‘novelty destroyed by disclosure’ rule include:
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- Where a grace period applies (such as in Australia) and a complete patent application is lodged within 12 months of the disclosure.
- Where the disclosure arises from a trial or an experiment and the nature of the invention makes it necessary that this be done in public.
- Where the disclosure takes place before a patent application is filed, but is protected by relevant exceptions (such as at a “recognised exhibition” or by a “learned society”). Provided a complete patent application is filed within 12 months of such a disclosure, the invention may still be considered novel.
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It is not only your own disclosures against which the novelty of the invention is tested. The invention must also be novel when compared with any published document or use, or other public disclosure anywhere in the world. This is regardless of whether the disclosure relates to a real or successful product. Any disclosure made in a document (whether the document has been read by anyone or not) that is publicly available before the priority date can be used to show that the invention is not novel.
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Inventive step
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To obtain a standard patent, an invention needs to be inventive or “not obvious” to another person with similar skills in the same technology. (A lesser standard is applicable for innovation patents – see Innovative step.)
Inventive step is difficult to determine and is the area of patent law that usually takes up most of the Court’s time if ever there is patent litigation.
One way to consider this issue is to ask the following question: “Would a noninventive person, who is experienced and knowledgeable in the area of technology to which the invention relates, when faced with the same problem that the invention has solved, have taken as a matter of routine whatever steps there were that led to the invention?”
When answering this question little weight should be placed on simplicity and on hindsight.
Australian patent law tells us that even a "scintilla of invention” is enough for there to be an inventive step, and also that the glare of hindsight is not to be used when considering whether an inventive step is an obvious step.
Do not be deterred from filing a patent application just because there is some doubt about whether there is an inventive step. If you are unsure if your invention is patentable, seek professional advice from one of our patent attorneys.
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Innovative step
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To obtain an innovation patent, the invention need exhibit an innovative step. This is a lesser test than an inventive step. To establish an innovative step, an invention must be different from the prior art in a way that makes a substantial contribution to the way the invention works.
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