Introduction

7.2 A ‘patentable invention’ under Australian law is one that satisfies the requirements set out in s 18 of the Patents Act 1990 (Cth) (Patents Act).^[1] The Patents Act requires that the invention fall within the concept of patentable subject matter under Australian law. Subject to certain express exclusions in the Patents Act, this requirement is primarily expressed in terms of the ‘manner of manufacture’ test.

7.3 Chapter 6 examined arguments that certain types of inventions involving genetic materials and technologies are not, or should not be, patentable on the grounds that such inventions do not satisfy patentability requirements, for example that the isolation of a genetic sequence and identification of its function may not involve an inventive step. It has also been suggested that certain types of inventions involving genetic materials and technologies should not be patentable on the ground that the inventions are not, or should not be, patentable subject matter. This amounts to a claim that certain genetic materials and technologies should fall within an exclusion from patentability.

7.4 This chapter begins by examining the existing exclusions from patentability contained in the Patents Act and their possible application to genetic materials and technologies. The chapter then outlines grounds on which some genetic materials or technologies might be excluded from patentability. These could involve new exclusions from patentability for genes and genetic sequences specifically; for methods of medical treatment; or on social or ethical grounds.