3. Definition of Invention
6. At present, s2 of the Patents Act 1953 (the Act") defines a patentable invention as:
any manner of new manufacture the subject of letters patent and grant of privilege within Section 6 of the Statute of Monopolies and any new method or process of testing applicable to the improvement or control of manufacture.
7. The discussion paper invited submitters to comment on five possible options for the definition of invention:
- no change to the current definition;
- retain the current definition, with specific exclusions from patentability;
- no formal definition of invention, with patentability based on the criteria of novelty, inventiveness and usefulness, with or without specific exclusions;
- retain the current definition, with the additional criteria of novelty, inventiveness and usefulness, with or without specific exclusions; or
- repeal the current definition, replace it with an alternative definition, with or without specific exclusions.
8. Thirteen submissions, mainly patent owners and users, specifically mentioned the issue of the definition of invention. The only options favoured were either option iii or option iv. Just over half the submitters favoured option iv. Of those submitters who favoured option iii, several indicated that if that option was not possible, then they would prefer option iv.
9. The submissions that favoured option iv generally argued that retaining the "manner of manufacture" definition would provide greater certainty to applicants, given the body of case law relating to this definition that has been built up over the years. The Law Society's submission noted that this definition has stood the test of time and that the courts have been able to interpret the definition and give it practical application.
10. The arguments raised in favour of option iii argued that repeal of the "manner of manufacture" definition would remove any doubts about the patentability of new technologies. This definition, it was submitted, leads to uncertainty for applicants. The NZIPA submitted that it would be desirable to have an approach to the definition of invention that is open to future technologies. Most supporters of option iii were not in favour of any exclusions to patentability, apart from an exclusion for human beings and processes for their generation.
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