Every business that builds something new eventually asks whether it can be patented. The short answer is that a patent protects an invention, and the Patents Act 1990 (Cth) (the Act) defines that word tightly. To be patentable, an invention must satisfy five separate tests, and failing any one of them means no patent, however clever the idea.
This guide sets out those five tests, the categories of subject matter the law refuses to protect, and where inventions most commonly come unstuck. It then walks through a realistic example so you can see the tests operating on a business like yours, and finishes with what a patent attorney actually does before you pay for one.
The five tests for a patentable invention
Section 18 of the Patents Act 1990 (Cth) sets out what makes an invention patentable. For a standard patent, the invention, so far as it is claimed, must meet all of these requirements:
- Patentable subject matter: it must be a manner of manufacture within the meaning of s 6 of the Statute of Monopolies.
- Novelty: when compared with everything already publicly available, it must be new.
- Inventive step: it must not be obvious to a person skilled in the relevant field.
- Utility: it must actually work as described.
- Sufficiency: the specification must fully describe the invention, disclose the best method known to the applicant, and end with claims that define the invention.
Each test deserves a closer look.
The manner of manufacture test
This is the gateway. Australian patent law protects a "manner of manufacture", a phrase that traces back to s 6 of the Statute of Monopolies of 1623. Over the centuries the courts have read it as covering products, processes and improvements that produce an artificially created state of affairs with economic significance, rather than mere ideas. A physical device with a new configuration, a chemical composition, a manufacturing process, or a new use of a known product can all qualify. What generally cannot qualify is an abstract idea, a scheme, or the discovery of something that already exists in nature.
Two High Court decisions show where the line sits. In D'Arcy v Myriad Genetics Inc [2015] HCA 35, the Court revoked patent claims to isolated BRCA1 gene sequences: isolating naturally occurring genetic information was not a manner of manufacture. And in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29, the Court held that a new feature game for an electronic gaming machine was not patentable where the claimed advance lay in the game's rules rather than in any technical improvement to the machine. An invention implemented on a computer can still qualify, but only where the specification shows a genuine technical contribution, not just business logic running on generic hardware.
Novelty
Novelty is judged against everything already made publicly available anywhere in the world before the priority date of your claim. A journal article, a website, a trade show demonstration, a public software repository: all of it counts. Section 7 of the Act provides that an invention is novel unless the claimed invention is disclosed in prior art information made publicly available in a single document or act before that date.
One trap catches many founders: your own disclosures count against you. Australia does allow a limited grace period under s 24 of the Act. Information made publicly available by you, with your consent, or by someone who derived it from you can be disregarded when assessing novelty, provided a complete application is filed within the prescribed period, which is 12 months. The grace period is narrow and easy to misapply, so the safe rule is to file before you disclose anything to anyone outside a confidential relationship.
Inventive step
Even a genuinely new invention is not patentable if it is obvious. Under s 7 of the Act, an invention lacks an inventive step if it would have been obvious to a person skilled in the relevant art, having regard to the common general knowledge and the prior art. In practical terms: would a competent engineer in your field, given the known materials and the problem you set out to solve, arrive at your solution without a creative leap? If the answer is yes, the invention fails this test.
This is where combinations often fall over. Joining two known parts in a predictable way, with no unexpected result, usually lacks an inventive step even if nobody has combined them before. What rescues a combination is a synergistic or surprising effect that a skilled person would not have predicted.
Utility
Section 18(1)(c) requires the invention to be useful. The claims must actually achieve the result they promise. An invention that does not work as claimed, or only works in a narrow version that the claims do not cover, fails the test. Utility problems usually trace back to overpromising in the specification, which is why the drafting stage matters.
A full description and the best method
The specification is the price of the monopoly. Under s 40(2) of the Act, a complete specification must disclose the invention in a manner clear enough and complete enough for a person skilled in the relevant art to perform it, and must disclose the best method known to the applicant of performing the invention. It must end with claims defining the invention, and the claims must be clear, succinct and supported by the specification.
A thin specification can invalidate a granted patent, so the test is not satisfied by a description that only works for one narrow prototype. The reader must be able to reproduce the invention across the full scope of the claims. This often means disclosing more technical detail than feels comfortable, and that is a normal part of the trade-off between disclosure and protection.
What the law refuses to protect
Some things are outside the patent system altogether, no matter how innovative they seem:
- Human beings and biological processes for their generation: expressly excluded by s 18(2) of the Act.
- Discoveries and products of nature: finding a natural phenomenon, a scientific principle, or a gene that occurs in nature is not enough, as D'Arcy v Myriad Genetics illustrates. There must be a practical application with a technical character.
- Abstract ideas, business schemes and mental processes as such: a method of doing business, a rule, an algorithm or a game played on a generic computer is not a manner of manufacture, as Aristocrat illustrates.
- Mere presentation of information: arranging information in a new way, without any functional technical effect, is generally not patentable.
Two grey areas are worth knowing about. First, methods of medical treatment: unlike some other countries, Australia treats these as patentable subject matter, a position the High Court confirmed in Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd [2013] HCA 50. Ethical and public policy considerations can still shape what is granted. Second, software: it is not categorically excluded, but it only crosses the line where the invention solves a technical problem in a technical way.
A worked example: the water-saving valve
Mia runs a commercial kitchen equipment business in Melbourne. She has designed a valve that recycles rinse water inside commercial dishwashers. A new internal chamber geometry cuts water use by around a third in her testing. She wants to know whether she can patent it.
Run the valve through the five tests and the picture is encouraging. It is a physical device with a new configuration, which is squarely a manner of manufacture. A professional search finds no public disclosure of the chamber geometry anywhere in the world, so it is novel. A skilled hydraulic engineer given the known valve designs would not obviously arrive at that geometry, so there is an arguable inventive step. The prototypes work, satisfying utility. The remaining work is sufficiency: the specification must let a skilled person make the valve across the claimed range of sizes, materials and dishwasher models, and disclose her best method of manufacture.
Now compare the scheduling app Mia also built, which times dishwasher cycles around usage patterns. The scheduling logic by itself is a scheme: a smarter timetable, not a technical improvement in how the dishwasher operates, so it would struggle to clear the manner of manufacture test. Her brand name is a trade mark matter, and the valve's distinctive external shape could be a registered design matter. None of these compete with the patent; they sit alongside it.
Common misconceptions about patents
Misconceptions about patents are widespread, and acting on one of them is an expensive mistake. Here are the ones that cause the most trouble:
- "Nobody in Australia has done this, so it's new": novelty is judged worldwide, and your own public disclosures count against you.
- "I can patent the idea": no. The law protects the invention as claimed, with a technical character. Ideas, schemes and discoveries are not patentable.
- "Software can't be patented": computer-implemented inventions can be, but only where there is a genuine technical contribution rather than rules or business logic moved onto a computer.
- "The grace period will save me": the 12-month grace period only covers disclosures by you or derived from you, and only if a complete application is filed within the period. An independent third party's public disclosure still destroys novelty.
- "Once I file, I'm protected": a patent's full rights bite on grant. Before grant, provisional rights attach only once the complete specification is open to public inspection, and enforcing the patent is your job, not the Patent Office's.
- "A patent protects my brand": no. Patents protect the invention, trade marks protect the brand, and designs protect the look. They are separate registrations.
- "The innovation patent is a cheaper option": innovation patents have been phased out: no new filings have been possible since 26 August 2021, and the IP Australia guidance confirms existing ones run their course.
When to bring in a patent attorney
Drafting and prosecuting a patent application is specialist work, and in practice it is done by a registered patent attorney. What the attorney does for you is more than paperwork: they run a proper prior art search, draft claims that balance breadth against validity, and choose the filing strategy, including whether a provisional application is worth using to secure an early priority date while you test the market. If you plan to file overseas, they will explain the Patent Cooperation Treaty route, which lets you file one international application and later enter individual countries. There is no such thing as a world patent.
Around the patent sits a layer of commercial legal work that an intellectual property lawyer handles. Ownership needs to be vested in the business through employment and contractor agreements before value accumulates, confidentiality needs to be protected with non-disclosure agreements in every pitch and pilot, and any licensing or assignment of the technology needs proper terms. If the invention is software-enabled, the lawyer can also align your product terms and end user licence with the way the technology actually works.
When you meet your advisors, bring a short written summary of the problem you are solving, how your solution works, what you have built or tested, any public disclosures that have already happened, and a high level commercial plan. That is enough for them to spot risks quickly, and it will save you money compared with briefing them from memory.
File before you disclose: the decision every inventor faces
The single most common way patent rights are lost in Australia is not a failed examination. It is public disclosure before filing, whether through a trade show demo, a pitch without a non-disclosure agreement, a blog post, or an uncontrolled beta trial. Once that happens, the clock starts, and only the narrow grace period can save you.
Before you spend money on a full application, answer two questions. First, have I disclosed this to anyone outside a confidential relationship? If the answer is yes, tell your attorney immediately, because timing now drives everything. Second, is my advance technical, or is it an idea, a scheme or a rule? If you cannot yet explain the technical problem your invention solves and the technical way it solves it, treat the manner of manufacture question as open until an attorney has looked at it. Answer those two questions honestly and you will avoid the two most expensive mistakes in Australian patent law.