How do I determine if my invention is patentable?
Patentable subject matter
A wide variety of subject matter is patentable including new or improved products, processes, compounds, micro-organisms, software and therapeutic treatments. However, some subject is excluded from patentability such as mere business schemes, pure discoveries without an industrial use and naturally occurring substances or organisms. The rules on excluded subject matter vary from jurisdiction to jurisdiction and this can guide a patenting strategy. For example, methods of medical treatment are patentable in Australia but not New Zealand or Europe. In some cases, it is possible to work around the exclusions by framing an invention carefully.
Novelty and Inventive Step
In order for an invention to be patentable it must be novel, i.e. not known to the public before the patent application is filed. In most countries, novelty is assessed based on what was published or used before the filing date of the first patent application for the invention. This includes any publication or use by the patent applicant. It is therefore important to avoid non-confidential disclosures of an invention before a patent application is filed.
Typical non-confidential disclosures include offers for sale, advertising, public use and display of the invention. There are some exceptions and we can advise whether these apply to your circumstances.
Some countries have provisions allowing for a valid patent to be obtained even if the invention has been disclosed before a patent application is filed, for example, Australia, New Zealand, and the USA each have one year “grace periods”.
In addition, an invention must involve an inventive step. Different countries have different tests for whether an invention involves an inventive step but generally the test involve a query as to whether the invention would have been obvious to a skilled person in the field based on what was published, used or common general knowledge at the filing date.
Searching
If you are unsure as to the novelty of your invention, a patent search can be undertaken before your application is filed. This will determine what is already known in your field of interest and may also be used to determine if any patent rights held by others may stop you from commercialising your invention.