Statutory requirements

8.1 Section 13(1) of the Act states as follows:

Subject to subsection (2), a patentable invention is one that satisfies the following conditions:

(a) the invention is new;
(b) it involves an inventive step; and
(c) it is capable of industrial application.

Section 13(1) contains the word “invention”. Therefore, the subject matter of a patent application must be for an invention – with the assessment of whether the invention is patentable involving a consideration inter alia of whether the subject matter is new, involves an inventive step and is capable of industrial application.

8.2 The primary focus of the inquiry under Section 13 should be on the criteria of novelty, inventive step and industrial application. In most cases, a finding that the claims do not fulfil any one or more of the three requirements of novelty, inventive step and industrial application would be a sufficient basis for an objection under Section 13. Examiners should begin by properly construing the claims and identifying the claimed inventive concept (Chapter 2 and Section F in Chapter 4). The Examiner then proceeds to consider the specific conditions set out in Section 1 (1), including novelty, inventive step and industrial application.

8.3 If there is a residual issue that the claims may relate to subject matter which is not an “invention”, a separate analysis of the claimed subject matter should be undertaken. In determining whether or not the claims define an “invention”, the Examiner should take into account the substance rather than the form of the claims in order to identify the actual contribution which is made by the claimed subject matter, having regard to the problem to be solved, how the claimed subject matter works, and what its advantages are. Regard should also be given to the person skilled in the art and the common general knowledge he possesses.

8.4 The identification of the “actual contribution” referred to here is the second step in the Aerotel/Macrossan test in Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 [2007] RPC 7 (Aerotel/Macrossan). The critical factors for the Examiner to consider when identifying the actual contribution can be found at [43] of Aerotel/Macrossan;

“The second step – identify the contribution – is said to be more problematical. How do you assess the contribution? Mr Birss submits the test is workable – it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended.”

8.5 An objection should be raised if the actual contribution lies solely in subject matter that is not an “invention” (for example, if the actual contribution falls within any of the areas described in sub-sections i, ii, iii, iv or v of this Section in this Chapter).

8.6 In considering the actual contribution of claims directed to computer implemented inventions (CIIs), Examiners should determine the extent to which the computer (or other technical features) contributes to the invention defined in the claims. For such CIIs, it must be established that said computer (or other technical features), as defined in the claims, is integral to the invention in order for the actual contribution to comprise said computer (or technical features).

8.7 For example, claims relating to a computer-implemented business method would be considered an invention if the various technical features (e.g. servers, databases, user devices etc.) interact with the steps of the business method (i) to a material extent; and (ii) in such a manner as to address a specific problem. As an example of what is meant by “material extent”, a claim may recite known hardware components for implementing a business method, but if the overall combination of the hardware provides, for example, a more secure environment for performing transactions, then  the hardware would be regarded to interact with the business method to a material extent to address a specific problem. The actual contribution, in this case, is likely to be the use of that combination of hardware for the business method, which would be considered an invention. However, if the technical features recited in the claim are such that they are no more than the workings of a standard operating system, in particular, the use of a generic computer or computer system to perform a pure business method, then such an interaction would not be considered to be a material extent and it is apparent that no specific problem is solved. The actual contribution is likely to be the business method, and the claimed subject matter would not be considered an “invention” by merely including the term “computer implemented” or a similar generic term in the claims.

8.8 The following sub-sections provide some guidance as to what “subject matter” are not considered to be “inventions”. These are presented in view of the local jurisprudence and also in view of the public policy considerations, including maintaining consistency with international patent norms. Generally, major jurisdictions including the US, Europe, the UK and Australia preclude mental, intellectual, aesthetic and abstract matters from being patentable. The following sub-sections should not be considered to be exhaustive as to what “subject matter” are not considered to be “inventions”.