The critical question to consider is whether the claimed invention relates to non-patentable or patentable subject matter. This can be answered by determining whether the claimed invention lies in the intellectual or academic realm, or the technical or practical realm. Technical or practical matter is patentable.

Examiners should note that an invention where the inventive element resides solely in a discovery, idea, scientific theory or mathematical algorithm may still be patentable. Consequently, it is necessary to consider the contribution made by the invention as a whole, without regard for its individual parts and the individual contributions they may make.

Discoveries

Case Law

The High Court in National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252; (1961) RPC 134 (NRDC), citing with approval the view expressed by Lindley LJ in Lane Fox v Kensington and Knightsbridge Electric Lighting Company (1892) 3 Ch. 424, stated:

".....a man who discovers that a known machine (his Lordship might equally have said a known substance) can produce effects which no one before him knew could be produced by it has made a discovery, but has not made a patentable invention unless he so uses his knowledge and ingenuity as to produce either a new and useful thing or result, or a new and useful method of producing an old thing or result."

(see also Hayasibara Co.'s Patent (1977) FSR 582 at 590 and Reynolds v Herbert Smith (1903) 20 RPC 123 at 126).

However, no general definition can be given as to what constitutes a discovery as opposed to an invention. The Court in NRDC (supra) stated:

"The truth is that the distinction between discovery and invention is not precise enough to be other than misleading in this area of discussion. There may indeed be a discovery without invention - either because the discovery is some piece of abstract information without any suggestion of a practical application of it to a useful end, or because its application lies outside the realm of 'manufacture'."

Examples

A chemical substance or micro-organism which is discovered in nature without any practical application is a "mere chemical curiosity" and not patentable subject matter.

More commonly, a specification will provide some practical application for an isolated substance or micro-organism. Although such subject matter is potentially patentable, examiners should consider whether the claims distinguish the micro-organism or substance from those forms which already exist in nature.

Thus, a micro-organism, protein, enantiomer or antibiotic discovered in nature can be claimed in its isolated form, or as substantially free of (specified) impurities (see also 2.9.2.14 Micro-Organisms and Other Life Forms).

Where a gene is claimed in its recombinant or isolated or purified form, see 2.9.2.6 Nucleic Acids and Genetic Information.

An example of subject matter which would constitute a discovery, and not an invention, would be where a known material is found to have a hitherto unknown property. However, if the discovery leads to the conclusion that the material can be used for making a particular article or in a particular process, then the article or process may be patentable. For example, determining that a particular known material is able to withstand mechanical shock is a discovery and therefore unpatentable. However, a claim to a railway sleeper made of the material would be regarded as patentable (see also 2.9.2.17 New Uses).

New Principle

Where a discovery is a new principle with a practical application, the inventor is entitled to claim broad patent protection. However, care is necessary to distinguish between:

genuine new principles;
principles of which practical applications were known although the principle was unrecognised; and
solutions to problems.

Claims directed to a principle per se are not allowable. However, claims directed to a "principle" coupled to a general method of manufacture may be allowable, provided the principle is new and at least one mode of carrying it into effect is disclosed (see R.C.A. Photophone Ltd. v Gaumont-British Picture Corporation (1936) 53 RPC 167).

In David Kahn Inc. v Conway Stewart (1974) RPC 279, it was stated at pages 319 and 320:

"A patentee may rightly claim a monopoly wider in extent than what he has invented. If he has discovered a general principle or invented a general method and discloses one way of carrying it out, he may claim all ways of carrying it out, but 'he is not entitled to claim a monopoly more extensive than is necessary to protect what he has himself said is his invention'. He cannot claim all solutions to a problem unless invention lies in the identification of the problem."

However, a wide claim to an application of a principle must not be so extensive as to amount to any method of solving a particular problem (see British United Shoe Machinery Co. Ltd. v Simon Collier Ltd. (1909) 26 RPC 21). Often an objection that the claims are not supported by matter disclosed in the specification (sec 40(3)) will be applicable.

Ideas

A mere idea is not patentable subject matter. In Hickton's Patent Syndicate v Patents and Machine Improvements Co. Ltd.(1909) 26 RPC 339 at 348, it was stated:

"No doubt you cannot patent an idea, which you have simply conceived, and have suggested no way of carrying it out, but the invention consists in the thinking of or conceiving something and suggesting a way of doing it.....I think you can have a Patent for an idea, which is new and original and very meritorious, if you suggest a way of carrying it out. If you do not so suggest, you cannot no doubt have a patent....".

(see also Thomas & Anor v Chappell & Anor (1991) AIPC 90-798).

Schemes and Plans

In Grant v Commissioner of Patents [2006] FCAFC 120, the Full Federal Court affirmed that “Business, commercial and financial schemes as such have never been considered patentable” and pointed out that patents have been refused for methods of calculation, theoretical schemes, including business schemes and abstract plans, such as:

systems for arrangement of known things, such as a plan relating to the layout of houses in a row or terrace so as to prevent overlooking (Re ESP’s Application (1944) 62 RPC 87);
an arrangement of buoys for navigational purposes (Re W’s Application (1914) 31 RPC 141);
a system of business even though its implementation involved the use of a printed envelope with a particular arrangement of words (Re Johnson’s Application for a Patent (1901) 19 RPC 56 at 56); and
a method of preventing the fraudulent re-use of sales book dockets and books used in that connection (Re Brown (1899) 5 ALR 81)

It further stated that it has long been accepted that "intellectual information", a mathematical algorithm, mere working directions and a scheme without effect are not patentable.

See also Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 and Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 which emphasised the need for the substance of the claimed invention to be patentable subject matter (for detailed guidance regarding determination of the substance of the invention, see also 2.9.2.1 Legal Principles and 2.9.2.7 Computer Implemented Inventions - Schemes and Business Methods). Care must be taken, when determining whether a claim is directed to a manner of manufacture, to follow the principles for determining the substance of the invention (see 2.9.2.1 Legal Principles) before characterising the invention as a mere scheme or business method.

In considering whether the substance of the claimed invention is a scheme or plan it is necessary to go beyond the form of words used. The alleged invention is to be understood in the context of the specification as a whole and the relevant common general knowledge and prior art. For example, the substance of an alleged invention may be a scheme even if the claims literally define or otherwise involve a physical product which is the subject of the scheme.

Limiting the claims to a technological environment may not alter the fact that what is claimed is a scheme or abstract idea. For example, a method of extracting oil from a well characterised by a scheme to maximise profit by allocating pumping resources according to customer demand is still a business scheme, even if tied to a technical activity.

A method or process that is more than a mere scheme or plan will, as a matter of substance, involve a technological aspect reflected in a material effect or advantage within the principles expressed by the High Court in NRDC [1959] HCA 67. Examples of such methods include producing electrical oscillations (Rantzen's Application (1947) 64 RPC 63), a weed-free tract of sown land (NRDC), a fog-free atmosphere (Elton and Leda Chemicals Ld.'s Application (1957) RPC 267) or a fire quenched subterranean formation (Cementation Co. Ltd.'s Application (1945) 62 RPC 151).

In cases where a dependent claim defines a scheme but incorporates patentable subject matter defined in an independent claim, for example a new and inventive method for producing a drug further characterised by a scheme for marketing the drug to medical practitioners, it is not necessary to object provided the claim is truly dependent. In that case the claim is directed to more than a mere scheme and, in any event, defines something already within the right to exploit the patentable invention (e.g. to hire, sell etc).

Scientific Theories and Mathematical Algorithms

Scientific theories are themselves not patentable, regardless of how radical or revolutionary their insights may be. However, if they lead to practical applications, those applications may be patentable. Similarly, mathematical algorithms are not patentable, however their application may be (see 2.9.2.10 Mathematical Algorithms).

Laws of Nature

The discovery of laws or principles of nature or science is not patentable subject matter. However, the application thereof to produce a particular practical and useful result may be patentable.

Where an invention appears to contravene a well-known law of nature (for example, perpetual motion machines), examiners should refer to the procedures outlined in 2.11.3.11 Contravention of Laws of Nature – e.g. Perpetual Motion Machines.

Section 40 Considerations

Where the specification does not disclose any means of putting an idea/scheme/plan/discovery etc into effect, then in addition to a manner of manufacture objection, examiners should consider whether the requirements of sec 40(2) have been met. Alternatively, a specification may disclose a means of putting such an invention into effect, however the claim may not be so limited. In such situations, the claims are likely to lack support under sec 40(3) in addition to failing the manner of manufacture requirements.