What is patentable subject matter? Is the ‘manner of manufacture test’ on its way out (yet again)?
On 21 September 2009, the Advisory Council on Intellectual Property (“ACIP”) released an options paper on patentable subject matter.
‘Manner of manufacture’ test
The paper analyses and discuses the value of the ‘manner of manufacture’ test currently used in determining whether an invention is patentable. ACIP is seeking comments on the following four options:
- retaining the manner of manufacture test. Some suggest the test is flexible and can be adapted to new technologies. On the other hand, it has been criticised as being unpredictable and obscure.
- clarifying the definition of invention to ‘an artificially created state of affairs in a field of economic endeavour’ – as espoused by the High Court in National Research Development Corporation v Commissioner of Patents (” NRDC case”) (1959) 102 CLR 252.
- replacing the manner of manufacture test with an alternative test. One possibility is to adopt the same wording as the TRIPS agreement which provides that patents are available for ‘any invention in a field of technology’.
- deleting the manner of manufacture test. An invention would only have to satisfy the current requirements of novelty, inventiveness and usefulness in order to be patentable.
Exclusions from patentability
Currently some inventions are specifically excluded from patentability by legislation and others can be excluded on the grounds that they are generally inconvenient. ACIP is seeking comments on the following options:
- retaining the current exceptions. These include excluding inventions on the grounds of being generally inconvenient. Human beings and the biological processes for their generation are also specifically excluded from patentability.
- specifically excluding certain subject matter from patentability i.e in the form of a list.
- excluding inventions which are contrary to public order or morality. This would provide flexibility but the subjective nature of the exclusion could create uncertainty.
The ACIP options paper also examines other possible changes which could clarify the scope of patentable subject matter. These include:
- reforming the requirements for inventiveness on the face of the specification by removing reference to the Statute of Monopolies in the definition of invention in Schedule 1 of the Patents Act 1990 (Cth).
- reforming the requirements relating to the usefulness of an invention. The patent examiners would need to assess whether an invention has a specific, substantial or credible use.
- providing for an advisory panel to advise the commissioner of patents on matters of social policy or morality relating to patentable subject matter. The panel would only provide non-binding advice.