2.31.4.6 Ground (3): Subsections 18(2) and (3)

Subsection 18(2)

The consideration of sec 18(2) issues is the same for innovation patents as it is for standard patent applications, i.e. human beings, and the biological processes for their generation, are not patentable.

Subsection 18(3)

Subsection 18(3) specifically excludes certain subject matter from the scope of an innovation patent. An innovation patent is not permitted for plants and animals, and biological processes for the generation of plants and animals.  In particular, this includes:

• genetically modified whole plants, plants produced by cross-breeding of one strain with another strain, or selection of a plant from a range of plants;
• genetically modified whole animals (including human beings), animals produced by cross-breeding of one strain with another strain, or selection of an animal from a range of animals;
• seeds of plants, plant tissue cultures, or any matter that could give rise to a plant; and
• animal embryos or foetuses, zygote, or any matter or group of cells, that could give rise to an animal.

The intent of the exclusion in the legislation was in part to avoid overlap between innovation patents and Plant Breeder's Rights.

The Plant Breeder's Rights Act 1994 defines “plant” as follows:

"plant includes all fungi and algae, but does not include bacteria, bacteroids, mycoplasmas, viruses, viroids and bacteriophages."

Consequently, for the purposes of an innovation patent, the meaning of "plant" under sec 18(3) includes all fungi (including yeasts and moulds) and algae.

However, claims to micro-organisms (including bacteria, protozoans, bacteroids, mycoplasmas, viroids, bacteriophages and viruses per se) are not excluded under sec 18(3), since they are not considered to be either plants or animals.  

Note that processes which use a plant or animal, or part thereof, but which do not result in a plant or animal, are not excluded.  For example, the use of rennet to make cheese, or the use of potatoes to make chips, would not be excluded.

Subsection 18(4)

Subsection 18(3) does not apply if the invention is a microbiological process, or a product of such a process (sec 18(4)).  Thus:

• preparation of cheese, wine making, brewing and industrial processes involving the use of micro-organisms, such as microbial bleaching or leaching of ores using micro-organisms;

• the use of enzymes derived from micro-organisms for the preparation of, for example, cheese or detergents comprising protease;

• the use of yeast, fungi or moulds for the production of useful products, for example penicillin, enzymes, fermented meats, or industrial alcohol and the products produced by such use; and

• the use of viruses in the preparation of vaccines;

are patentable inventions.

Where examiners have any doubts as to whether an invention is patentable, the matter should be referred to a supervising examiner.