Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure. Initial Considerations

Date Published

Key Legislation: 

Patents Act:

  • s7 Novelty, inventive step and innovative step  
  • s7A Meaning of useful  
  • s18 Patentable inventions
  • s40 Specifications 
  • s41 Specifications: micro-organisms 


Related Chapters:


Identify the Field of the Invention 

Identify the field of the invention; that is, which area of technology the invention involves. For example, the invention lies in the field of refrigerated gases.

Typically, most specification will provide a broad statement as to the general field to which the invention relates.  Such statements are usually provided at the beginning of the specification or as part of the discussion on the background of the invention.  While such statements may provide a useful indication of the field of technology in which the invention lies, examiners are reminded that the determination of the field should be done based on a consideration of the specification as a whole.

Identify the problem addressed

Identify the problem that the invention is intended to solve.

The problem provides the context for identifying the person skilled in the art and determining the relevant common general knowledge. It is also the basis for understanding the state of the art in order to be able to assess inventive step.

In many cases, the specification will explicitly identify the problem. If not, it should be possible to infer the problem from statements in the specification about:

  • a stated object (aim) of the invention; or
  • difficulties identified with the prior art.

If the specification presents conflicting indications as to the nature of the problem, the examiner needs to resolve the conflict by weighing the different statements.

Do not include any part of the solution in the phrasing of the problem.

Amended Reasons

Amended Reason Date Amended

Published for testing

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