The push towards research commercialisation is bringing academia and industry closer than ever. It’s an exciting time to work in science and tech sectors, with more researchers bringing their ideas out of the lab and into the community. Whether you’re founding your own spinout or licensing your research to large corporations, patent protection is an important part of this process.
As former researchers, we understand the challenges that researchers face. Our journey into the world of intellectual property (IP) has provided us with the insight and expertise to share back with the communities we started in.
Is my research a patentable invention?
Many academics and researchers want to take their research out of the lab and bring it into the wider world. Patents can be a useful tool for this, as they can help you to protect yourself from copycats, licence or sell your idea to an established company, and/or secure investor funding. Part of deciding if and when to patent your research is knowing whether your research meets the criteria for being a patentable invention.
This article will introduce the basics of what can and can’t be patented in New Zealand, Australia, and around the world.
What can be patented?
In both New Zealand and Australia, a patentable invention must:
- be a ‘manner of manufacture’
- not be excluded from patentability
- be useful
- be novel and inventive.
‘Manner of manufacture’ means that a patentable invention can’t be an abstract idea. It must have a physical, real world element to it. Generally a ‘manner of manufacture’ will be a product or a method for doing something. New microorganisms, mechanical and electrical devices, chemicals, materials, and processes for making them are some examples of things that can be patented.
Things that aren’t patentable because they don’t have a physical element are often referred to as ‘mere schemes or plans’. Business methods and ways of displaying printed information often fall into this category.
You also can’t patent concepts like mathematical equations or laws of nature. You can however patent devices that use those equations and laws of nature. For example, a machine that uses an algorithm to control its operation may be patentable, but the algorithm itself cannot be patented. Similarly, you can’t patent a mechanism of action for a drug, although you may be able to patent the drug itself.
Specific exclusions from patentability
Many countries exclude specific things from patentability. Australia and New Zealand both exclude people and methods for generating people from patentability. New Zealand has several further exclusions:
- Computer programs.
- Methods of treating or diagnosing illness in people.
- Methods for cloning people or making inheritable genetic modifications to people.
- Methods for genetically modifying animals that are likely to cause them undue suffering.
If your software interacts with something outside of the computer, or it improves or changes the way a computer functions, it may be patentable. It will still need to meet the other requirements for patentability.
While methods of treating or diagnosing people are excluded from patentability in New Zealand, there are still a number of ways to patent medical inventions. For instance, medical devices and new medications are patentable in New Zealand using specific claim types. It’s also possible to patent a new use for a known medication.
Different countries have different exclusions. For example, in Australia you can patent methods of treatment and diagnosis of humans, and certain types of computer programs. In the United States, methods of medical treatment, computer programs, and business methods can all be patented in some circumstances, whereas natural biological substances often cannot.
If your research is close to an excluded area, it can be challenging to know what you can protect with a patent in different countries. If you’re unsure, reach out to one of our experts and we can provide you with guidance on your options.
What makes an invention useful?
Most of the time a description of an invention is enough to show that it’s useful. This means that you won’t typically need to do much to meet this requirement. If it’s not immediately obvious why your invention is useful, then you will need to show this in your patent application. This may mean including a statement about a specific real-world use, and showing evidence that your invention does what you say it will do. This commonly applies to inventions like medications, chemicals, and materials.
Novelty and inventiveness
Novelty and inventiveness are typically the biggest hurdles for patentability. We’ll be covering these in our next article. If you would like to be notified when this is released, sign up to receive our latest insights at www.ajpark.com/signup/
