A line drawn in the sand on what is “patentable subject matter” in Australia
In Milton Edgar Anderson [2008] APO 19 (11 August 2008) Deputy Commissioner Spann has upheld the view that inventions relating to a mere scientific theory or discovery of the laws of science without a specific practical and useful application are not a manner of manufacture as required by section 18(1)(a) of the Australian Patents Act.
In this case the invention related to “the new science of subtronics” and “a new law of electric induction” and the alleged inventive concept resided in the “revelation and utilisation of an antimatter voltage force that stems from the discovery of electrosubtronic fields and culminated in the new science of subtronics”.
Deputy Commissioner Spann noted that section 18 sets limits on the subject matter for which a patent can be granted in Australia. In addition to the requirement that a claimed invention be novel and non-obvious, the subject matter must be a manner of manufacture. Whilst the notion of what is “a manner of manufacture” has evolved over time, the Delegate considered that there are certain fields that will always be excluded such as expressions of human intellectual activity, discoveries of the laws of nature or science, scientific theories, ideas, mere schemes and plans and mathematical algorithms per se unless they have been embodied in some technical application. In this particular instance the invention claimed was a scientific theory or discovery of the laws of science without any specific practical or useful application and therefore not patentable subject matter.
It is worth noting that the patent law in New Zealand has evolved in a way similar to that in Australia. That is decision of the High Court in National Research Development Corporation v. Commissioner of Patents (1959) 102 CLR 252 has been followed on many occasions by NZ Courts and Intellectual Property Office of New Zealand. With the introduction of a new Patents Act in late 2009 and having a provision identical to section 18 of the Australian Patents Act, it is expected that the Intellectual Property Office and of course the NZ courts will continue to adopt a similar line to Australia on what is deemed patentable subject matter.
In this case the invention related to “the new science of subtronics” and “a new law of electric induction” and the alleged inventive concept resided in the “revelation and utilisation of an antimatter voltage force that stems from the discovery of electrosubtronic fields and culminated in the new science of subtronics”.
Deputy Commissioner Spann noted that section 18 sets limits on the subject matter for which a patent can be granted in Australia. In addition to the requirement that a claimed invention be novel and non-obvious, the subject matter must be a manner of manufacture. Whilst the notion of what is “a manner of manufacture” has evolved over time, the Delegate considered that there are certain fields that will always be excluded such as expressions of human intellectual activity, discoveries of the laws of nature or science, scientific theories, ideas, mere schemes and plans and mathematical algorithms per se unless they have been embodied in some technical application. In this particular instance the invention claimed was a scientific theory or discovery of the laws of science without any specific practical or useful application and therefore not patentable subject matter.
It is worth noting that the patent law in New Zealand has evolved in a way similar to that in Australia. That is decision of the High Court in National Research Development Corporation v. Commissioner of Patents (1959) 102 CLR 252 has been followed on many occasions by NZ Courts and Intellectual Property Office of New Zealand. With the introduction of a new Patents Act in late 2009 and having a provision identical to section 18 of the Australian Patents Act, it is expected that the Intellectual Property Office and of course the NZ courts will continue to adopt a similar line to Australia on what is deemed patentable subject matter.
Labels: australian patents
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