What is patentable subject matter
For European and US applicants, what can be patented in Australia and New Zealand, and as importantly, what cannot be patented, can be difficult and frustrating to navigate. How this is assessed can result in different outcomes between Australia and New Zealand, and different outcomes from those achieved elsewhere.
Australia and New Zealand have the same basic requirement that a claimed invention must be a ‘manner of manufacture’, within the meaning of section 6 of the Statue of Monopolies. However, although both Australia and New Zealand have the ‘manner of manufacture’ requirement, they do not always apply it in the same way. For example, each country has its own case law, and the statutory exclusions differ.
Therefore, claims that have been drafted for the USPTO or EPO, may need to be adapted for Australia and New Zealand, particularly when they are concerned with computer-implemented inventions or medical methods. Some things that may be patentable elsewhere, may not be patentable at all in Australia or New Zealand. Understanding these differences will not guarantee avoiding subject matter objections, but may help to develop a better claim and drafting strategy and in responding more effectively if any objections do arise during prosecution.
Requirements and exclusions
The New Zealand Patents Act 2013 (section 14) and the Australian Patents Act 1990 (section 18) each require that a patentable invention must be a ‘manner of manufacture’, be novel, involve an inventive step, be useful, and not fall within an exclusion.
However, the statutory exclusions in Australia and New Zealand are not the same:
|
Subject matter |
Australia |
New Zealand |
|
Human beings and biological processes for their generation |
Excluded by statute |
Excluded by statute |
|
Methods of treating human beings |
Patentable |
Excluded by statute |
|
Diagnostic methods on human beings |
Not expressly excluded |
Excluded by statute |
|
Computer programs 'as such' |
Not expressly excluded |
Excluded by statute |
|
Methods of treating animals |
Not excluded |
Not excluded |
New Zealand’s statutory exclusions are more explicit. Australia’s statutory exclusions are limited to human beings and processes for their generation. However, it is worth noting in both countries that other subject matter may be excluded because it has been determined by case law not to qualify as a ‘manner of manufacture’. This includes mere discoveries, abstract ideas, artistic works, and a mere scheme or plan. In Australia in particular, case law, rather than statute, had developed to govern the statutory requirement for an invention to be a ‘manner of manufacture’.
The manner of manufacture test
The Australian test, as developed through court decisions (most recently Aristocrat Technologies v Commissioner of Patents [2025]), involves:
- reading the claim and construing what it covers;
- characterising the invention as a matter of substance, i.e. what is the underlying contribution; and
- asking whether it falls into a category that the courts have said is not patentable (for example, a computer program, a mere scheme, plan, rules of gameplay, or abstract information).
A key question is whether the invention produces an ‘artificially created state of affairs’ and has ‘economic utility’. The scope of the first part of this assessment has proven to be highly arguable.
New Zealand also applies a manner of manufacture test, interpreted largely through UK and commonwealth case law, particularly in National Research Development Corporation v Commissioner of Patents [1959] HCA 67. Although the basic question is similar to Australia, asking whether the invention produces a practical and useful result, the way that the test is applied is shaped by New Zealand provisions and UK case law.
Therefore, while Australia and New Zealand share general concepts, the case law has been developed independently and a claim that satisfies the manner of manufacture requirement in one jurisdiction may not necessarily satisfy it in the other.
Computer-implemented inventions
Computer programs are not excluded by statute in Australia. Rather, computer-implemented inventions are assessed under the manner of manufacture test. Following Aristocrat [2025], the key question is:
- is the invention just an abstract idea which is manipulated on a computer (and if so, it is not patentable); or
- is the invention an abstract idea which is implemented on a computer to produce an artificial state of affairs and a useful result, (if so, it may be patentable).
Often computer implemented inventions are closely intertwined with business method inventions. If this is the case, obtaining patent protection in Australia or New Zealand can be particularly difficult, as compared to some other territories such as the US or Japan for example.
Generally, simply adding generic hardware to an otherwise unpatentable business scheme will not be enough. Manipulation of data by a computer system may likewise not be enough, even if the data manipulation process is new and clever.
In New Zealand, computer programs 'as such' are expressly excluded by statute. A claim is excluded if the actual contribution lies solely in it being a computer program. Whilst this might imply that it is straightforward to sidestep this exclusion, in practice IPONZ adopts a relatively strict assessment, based on a modification of the first three steps of the UK test set out in Aerotel Ltd v Telco Holdings Ltd & Ors Rev [2006]:
- Work out what the claim covers.
- Identify what the invention actually contributes to the art.
- Ask whether that contribution is solely a computer program. If yes, it is excluded.
Notably, question 4 of the UK test, which asks whether or not the contribution is ‘technical’, is not part of the test in New Zealand.
Perhaps oddly, the New Zealand Patents Act includes an example of an invention that would not be considered to be computer program as such, namely a washing machine controlled according to a computer implemented method to produce a better method of washing clothes. However, this merely confirms long held law that computer control of a physical machine or device can be allowable. The real difficulty comes in assessing inventions that are closer to the line than this, particularly where the output of the algorithm is not necessarily in control of a physical machine, but a generation of useful data or a signal for the user.
Method of treatment
In Australia, methods of treating human beings can be patentable.
In New Zealand, the statute excludes methods of treating humans by surgery or therapy, and diagnostic methods performed on humans. These exclusions are broad and cover preventative treatments, cosmetic surgery, and methods performed by machines, not just doctors. However, they only apply to humans so veterinary methods are fine. Where treatment claims are excluded, a Swiss-type claim may be used instead.
Practical tips
For US and European practitioners filing in Australia or New Zealand, you should:
- Check your treatment claims – Although these are fine in Australia, they must be removed or reformulated as a Swiss-style claim in New Zealand.
- Consider how to draft for computer implemented inventions – Both countries will ask what the invention really is to make sure that it produces a practical/useful result. This will generally require, at the least, a useful output outside of the computer system. Detail of the computer system components and the process steps should be included: mere reference to a generic computer system will likely not be enough.
- Do not assume that the two jurisdictions are the same – the case law and statutory exclusions differ.
- Get local advice – Interpreting the ‘manner of manufacture’ requirement can be difficult, and we can help navigate the respective systems, especially if we are involved early on in drafting applications or claims.
Summary
What is considered to be patentable subject matter in Australia and New Zealand, may appear similar on the surface, but in reality are not the same in terms of what is excluded, and in terms of the approach taken by each patent office. New Zealand has broader express statutory exclusions, while Australia has fewer express exclusions but claims may still be refused based on the relevant ‘manner of manufacture’ test determined by Australian case law.
Therefore, if you are considering patent protection in Australia or New Zealand, or are unsure how to adapt claims to meet the local requirements, please contact us.
