Patentability: Novelty, Inventive Step, Industrial Applicability and Excluded Subject Matter
The three tests
Section 11 requires an invention to be new, involve an inventive step and be industrially applicable. Novelty is absolute: Section 14 defines prior art as everything disclosed to the public anywhere in the world by publication, use or otherwise before the priority date. Inventive step (s. 15) asks whether the invention is obvious to a person skilled in the art having regard to the prior art; MyIPO applies a problem-and-solution style analysis. Industrial applicability (s. 12) is satisfied if the invention can be made or used in any kind of industry, including agriculture.
Exclusions
Section 13 excludes discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules or methods for mental acts, games or business, computer programs as such, and presentations of information. Also excluded are inventions contrary to public order or morality; plant and animal varieties; essentially biological processes for producing plants or animals (microbiological processes are not excluded); and methods of treatment of humans or animals by surgery, therapy or diagnosis, though products for use in such methods are patentable.
Worked example
An inventor discloses a new alloy in a conference paper on 1 June 2023 and files in Malaysia on 1 August 2023. Is the alloy novel? No, the paper is prior art unless a specific s. 14(3) exception applies, such as an official international exhibition or unauthorised disclosure. A general conference paper does not trigger the grace period. The client must either rely on an earlier priority filing or accept that novelty is destroyed.
Traps
- Treating the 12-month grace period as a general applicant grace period; it is limited.
- Forgetting that computer programs as such are excluded but technical implementations may be patentable.
- Assuming methods of treatment are wholly unpatentable; claims to products for use in such methods can survive.
- Overlooking that plant and animal varieties are excluded while microbiological processes are not.