3. Definition of Invention
What Is Meant by "Definition of Invention"?
46. The patent laws of some countries, including New Zealand, incorporate a definition of what constitutes an invention. Anything that does not fall within the definition is not considered to be an invention and will not be granted a patent, even though it otherwise meets all the other criteria for grant of a patent.
47. The reasons for having a definition of invention, at least in those countries that based their legislation on that of the United Kingdom, date back to the Statute of Monopolies. This statute was enacted in 1623 for the purposes of declaring all monopolies void. An exception, though, was made for "patents for invention" with the intention of encouraging national economic development. By providing a definition of invention, the monopoly rights conferred by the grant of a patent could be given only to those things that were seen to give real economic benefits to society. Things that were not considered to provide such benefits would not be considered inventions and would not be granted a patent.
48. The definition of invention is subject to interpretation by courts and patent offices. In general though, the sorts of things that have not been considered to be inventions include mere discoveries, scientific theories, mathematical algorithms, and purely aesthetic creations.
49. It is not absolutely necessary to have a definition of invention. Some countries do not include a definition of invention as such in their patent legislation. Instead, the legislation provides a list of those things which are not considered to be inventions, and not eligible for the grant of a patent.
50. Many countries also exclude certain types of invention from patent protection, even though they otherwise meet all the criteria for the grant of a patent. The inventions that are excluded from patent protection are usually those where there may be moral or cultural objections to granting patent protection.
51. Most countries are parties to the WTO TRIPS Agreement. Any exclusions from patent protection must be consistent with this agreement. Article 27 of the TRIPS agreement deals with patentable subject matter and permits some specific exclusions to patentability. The Patents Act 1953 is consistent with Article 27. Any changes to New Zealand's patent laws must be also be consistent with this Article.
52. Article 27 states:
| 1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.6 Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced. |
| 2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law. |
| 3. Members may also exclude from patentability: |
| (a) | diagnostic, therapeutic and surgical methods for the treatment of humans or animals; |
| (b) | plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement." |
The Definition of Invention in New Zealand
53. Section 2(1) The Patents Act 1953 defines an invention as:
any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies7 and any method or process of testing applicable to the improvement or control of manufacture; and includes an alleged invention
54. This definition of invention is essentially the same as that used in United Kingdom patent laws until the passage of the United Kingdom Patents Act 1977. Consequently there is an extensive body of case law from the United Kingdom courts concerning the interpretation of this definition. This case law has generally been followed in New Zealand. Where the courts have decided that something does not fall within the definition of invention, this is effectively an exclusion from patentability. These "judicial" exclusions (as opposed to "statutory" exclusions) include "products of nature", mathematical algorithms, bare principles, mathematical algorithms, mere schemes or plans, and methods of medical treatment of humans.
55. Section 17 of the Patents Act also allows the Commissioner of Patents to refuse to grant a patent for an invention on the grounds that the use of the invention is "contrary to morality". This provision has rarely, if ever, been applied.
56. New technologies have tested the limits of the current definition, and raised questions about the ability of the current definition to deal with inventions in areas such as biotechnology, medical treatments, computer software and business methods. Another issue is whether the Act should specifically state that some inventions should be excluded from patent protection.
57. It was recommended in the 1992 paper that the current definition of invention be repealed, and that the decision on whether to grant a patent should be made on the basis of what are now the three internationally recognised criteria of novelty, inventive step, and industrial applicability or usefulness. The paper stated that this would have the following advantages:
- A clear break from the present approach which would limit the restrictions imposed by previous practice;
- Greater certainty and potentially lower costs;
- Consistency with other jurisdictions.
58. The 1992 paper also recommended that there should be no specific exclusions from patentability, on the basis that existing exclusions could be dealt with by other means in the Patents Act or in the general law. The paper noted that exclusions reflect historical precedent and differing national perspectives on the impact of the patent system on economic development. On the basis of overseas experience, however, and following some strong objections to that recommendation, the government considers that this issue should be revisited.
59. Possible options for change to the definition of a patentable invention are described below. While mention is made of possible exclusions to patentability, it is not intended, in discussing the options for change, to determine what these exclusions (if any) might be. The question of whether there should be exclusions to patentability is explored later on in this document.
Option 1: No Change
60. Under this option the definition of a patentable invention as currently provided in s2 of the Act would remain. This would retain the present "judicial exclusions", while leaving the Courts free to interpret the definition of invention on a case by case basis, as has occurred in the past. The Commissioner of Patents would still have the power to refuse patents where the use of the invention would be "contrary to morality".
61. A possible disadvantage of retaining the present definition of invention is that it may lead to uncertainty as to the eligibility of some new technologies for patent protection. On the other hand, it has been argued8 that the current definition has demonstrated sufficient flexibility to meet the challenges of technological change, while adequately protecting society's interests.
62. Retaining the current definition of invention would not address such issues as whether or not life forms, or inventions related to genetic modification or engineering, should be the subject of patent protection. Neither would it address the question of the granting of patents to inventions that make use of Māori traditional knowledge and cultural intellectual property.
63. The Royal Commission on Genetic Modification has recommended (Recommendation 10.2) that the Patents Act 1953 include a specific exclusion of the patentability of human beings and biological processes for their generation. As the government has accepted this recommendation, this option (no change to the definition of invention) is not viable.
Option 2: Retain Current Definition, with Specific Exclusions
64. This approach would involve keeping the current definition of invention, while incorporating into the Act a list of things which, although they might satisfy the definition of "invention", were not considered suitable subject matter for a patent. Such exclusions would have to be consistent with Article 27.3 of the TRIPS agreement (see above). This may go some way towards meeting the concerns of those who feel that some things should not be granted a patent on moral or cultural grounds.
65. There may be others, however, who would oppose the addition of specific exclusions on the grounds that they would find such exclusions morally or culturally unacceptable. They may consider that such exclusions would discourage research in areas that would benefit society, such as the development of new medical therapies or labour-saving technologies.
66. The use of specific exclusions, however, may not be sufficient to deal with patents for inventions using Māori traditional knowledge and cultural property.
67. An advantage of this option is that it would retain the present judicial exclusions, while allowing the Courts the freedom to re-interpret the definition of invention as they consider necessary. It would also leave the Courts free to revisit the existing judicial exclusions. One risk with this approach is that it is possible that the Courts may consider that if one of the existing judicial exclusions was not specifically included as an exclusion in any new legislation this might indicate that Parliament did not wish to retain the exclusion.
68. This was the approach taken by the Australian Federal Court in Anaesthetic Supplies Pty Ltd v Rescare Ltd.9 In that case, methods of medical treatment of humans, previously unpatentable, were found to be proper subject matter for a patent. One of the grounds for this finding was that if Parliament had intended to continue to exclude such methods from patentability, it would have enacted a specific exclusion into the Australian Patents Act 1990. As no such exclusion was enacted, the Court concluded that Parliament did not wish the exclusion to continue.
69. If it is considered desirable that the present "judicial" exclusions remain, it may be necessary to provide for specific exclusions relating to them.
70. If New Zealand were to exclude certain technologies, for example gene technologies, from patent protection using Article 27.2 of TRIPS, this would not prevent the use of such technologies, nor would it prevent such technologies from being patented in other countries. It is also possible that other parties to the TRIPS agreement might challenge New Zealand's use of Article 27.2 in this way. The exclusion of some technologies from patent protection might act as a disincentive to research in those technologies in New Zealand, and result in a loss of New Zealand researchers to countries with a more liberal patent regime.
Option 3: No Definition of Invention
71. Under this option, the Act would contain no definition of invention. Anything that met the criteria of novelty, inventiveness and usefulness as specified in the TRIPS agreement would be granted a patent. Certain things that otherwise might meet these criteria could be specifically excluded from patent protection. The main advantage of this approach would be that patentability would not be restricted by previous practice. Other advantages and disadvantages are as for Option 2.
72. This approach is used in the European Patent Convention, and therefore also used in the United Kingdom Patents Act 1977.10
Option 4: Keep Current Definition, with Additional Criteria, with or without Specific Exclusions
73. The definition of invention would retain the requirement that an invention be "a manner of manufacture", with the definition of invention additionally including the specific criteria of novelty, inventiveness, and industrial applicability. Specific exclusions could be introduced. This is essentially the same approach as used in the Australian Patents Act 1990. The only specific exclusion from patentability in the Australian Act is for human beings, and biological processes for their generation. The advantages and disadvantages of this approach are the same as for option 2, with the additional advantage of harmonising New Zealand patent law more closely with that of Australia.
Option 5: Repeal Current Definition, Replace It with an Alternative Definition, with or without Specific Exclusions
74. Given the doubts that have been expressed about the current definition of invention, some alternative definition could be provided that could be more easily adapted to new technologies. Any new definition though, would still be subject to interpretation by the Courts, and there is no guarantee that any new definition would produce fewer problems than the present one. Any new definition could, of course, be accompanied by specific exclusions.
Questions
- Which of the options identified above should be adopted. Why?
- Should there be any specific exclusions from patentability? If not, why not?
- If there were to be specific exclusions, what should they be? Why?
- Should the power currently given to the Commissioner of Patents to refuse to grant patents for inventions whose use would be "contrary to morality" be retained? If not, why not?
Back to Top