Patentable Subject Matter under Australian Law

At the very foundation of the Australian patent system lies a threshold inquiry that every invention must satisfy, whether it constitutes a “manner of manufacture.” This requirement is not a mere formality. It is the legal gateway that determines whether an idea is capable of being transformed into an enforceable patent right. While the phrase itself is centuries old, its interpretation under Australian law has evolved continuously to accommodate new technologies and emerging fields of innovation.

Understanding what does and does not constitute patentable subject matter is essential, not only at the drafting and examination stages, but also for long-term enforceability and commercial certainty.

The “Manner of Manufacture” Principle

The phrase “manner of manufacture,” originates from Section 6 of the 1623 Statute of Monopolies, which remains the historical foundation of Australian patent law. Despite its antiquated language, Australian courts have consistently treated the concept as dynamic and adaptable, rather than fixed to the technologies of the past.

The authoritative modern interpretation is found in the hon’ble High Court’s landmark decision in National Research Development Corporation v Commissioner of Patents (1959), widely known as the NRDC case. This decision remains the touchstone for determining patentable subject matter in Australia.

In NRDC case, the hon’ble High Court rejected a narrow, product-centric approach and articulated two core requirements:

• the invention must give rise to an artificially created state of affairs; and
• that state of affairs must have economic utility, in the sense of providing a material advantage in a field of economic endeavor.

The Court recognized that patentable inventions are not confined to tangible, physical products. Processes, methods, and new applications of known materials may qualify, provided they  produce a useful and practical result, even if it doesn’t create a new product. This principle is vital; it means that the true inventive concept, whether it resides in a product, a process, or a new application, must be identified and properly claimed. The emphasis is on practical application, not abstract conception.

This principle continues to guide Australian patent law. The task is always to identify the substance of the invention and to assess whether it results in a concrete, human-made outcome with real-world utility.

Exclusions under Australian law

While the NRDC principles are broad, Australian courts have established several categories of subject matter that are generally not considered a manner of manufacture. These exclusions are not arbitrary but are based on the fundamental idea that patents are intended to protect applied technological innovation, not mere abstract information or natural phenomena.

Discoveries, Laws of Nature, and Abstract Ideas

Australian law draws a sharp distinction between discovery and invention. A discovery, such as the identification of a natural principle, scientific law, or mathematical relationship, is not patentable in itself. These exist independently of human intervention and do not constitute an artificially created state of affairs.

However, the practical application of a discovery may be patentable. Where a natural principle is harnessed in a specific, technical way to achieve a useful result, the invention lies in that application, not in the underlying discovery. An abstract idea becomes patentable only when it is embodied in a concrete method, system, or process that produces a real-world effect.

Human Beings and Biological Processes

Australian patent law explicitly prohibits the patenting of human beings and the biological processes for their generation. This exclusion has been carefully examined in the context of biotechnology and genetic inventions.

The High Court’s decision in D’Arcy v Myriad Genetics Inc (2015) is pivotal. The court held that an isolated nucleic acid sequence, the “information” of which is identical to that found in nature, do not constitute patentable subject matter. Although the sequences had been chemically isolated, the Court concluded that the substance of the claimed invention was the genetic information itself, i.e., a product of nature and therefore a discovery, not an invention.

This case reaffirmed that mere isolation or purification does not necessarily create an “artificially created state of affairs.” For biotechnology inventions, patentability depends on whether the claims are directed to a genuinely inventive application, modification, or use, rather than the mere discovery of biological information.

Business Methods and Computer-Implemented Inventions

Business methods and software-related inventions represent one of the most complex and evolving areas of Australian patent law. A mere business scheme or plan, even if novel, is not patentable merely because it is implemented on a computer.

Australian courts have consistently emphasized that a computer-implemented invention must involve more than the generic use of computing technology. The invention must lie in a technical contribution, such as an improvement in computer functionality, system architecture, or data processing, rather than in the abstract business logic itself.

The High Court’s evenly split (3:3) judgment in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2022) highlights the ongoing uncertainty in this area. While the patent for an electronic gaming machine was ultimately found invalid, the split decision left the precise test for patentability in this area unclear. The prevailing view from the courts is that the invention must provide a “concrete, tangible, physical or observable effect” and must not be for the “mere manipulation of an abstract idea.”

In practice, this requires careful claim drafting that identifies:

• the technical problem addressed;
• the technical means by which it is solved; and
• the technical improvement achieved.

Methods of Treatment

Unlike some jurisdictions, Australian patent law permits the patenting of methods of medical treatment for humans. The High Court confirmed this position in Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (2013).

The court held that a method of using a known pharmaceutical to treat a disease constitutes a manner of manufacture, because it produces an artificially created state of affairs with clear economic utility. The decision recognized that improving human health contributes directly to economic activity and workforce productivity.

As a result, new therapeutic uses of known substances may be protected, provided they meet the usual requirements of novelty, inventive step, and disclosure.

Utility and New Uses

Closely linked to patentable subject matter is the requirement for utility. An invention must not only be technically feasible but must also achieve the result promised in the patent specification. This utility must be specific, substantial, and credible; speculative or hypothetical advantages will not suffice.

Australian law also recognises that a new use of a known substance may constitute a patentable invention. Where a previously unknown property of a known product is discovered and applied in a novel way to achieve a new and useful result, the invention resides in that application.

The claims must be carefully framed to reflect the new use or method, rather than the known product itself. Proper articulation of the technical effect and its practical benefit is critical to satisfying both the manner of manufacture requirement and the utility threshold.

How can we help?

The requirement for a “manner of manufacture” is a complex, judicially-driven test that is constantly evolving with technology. Successfully navigating this requirement requires more than technical ingenuity. It demands a precise understanding of how Australian courts characterize inventions, distinguish application from abstraction, and identify genuine technical contribution. A carefully constructed patent strategy, grounded in these principles, is essential to securing durable, enforceable protection in Australia’s patent system.

Your innovation deserves a patent strategy that is as sophisticated and forward-thinking as the invention itself. Our firm provides the expert guidance necessary to secure robust patent protection. By engaging our firm, you gain a partner dedicated to translating your inventive concepts into valuable, enforceable intellectual property rights.

Contact us for a free consultation to discuss how we can secure the protection your innovation deserves.