INVENTIONS NOT PATENTABLE
INVENTIONS NOT PATENTABLE
Introduction Introduction
A patent is an exclusive right granted by a country to the owner A patent is an exclusive right granted by a country to the owner of an invention to make, use, manufacture and market the invention, of an invention to make, use, manufacture and market the invention, provided the invention satisfies certain conditions stipulated in the provided the invention satisfies certain conditions stipulated in the law. Exclusive right implies that no one else can make, use, law. Exclusive right implies that no one else can make, use, manufacture or market the invention without the consent of the manufacture or market the invention without the consent of the patent holder. This right is available for a limited period
patent holder. This right is available for a limited period of time.of time.
In spite of the ownership of the rights, the use or exploitation of In spite of the ownership of the rights, the use or exploitation of the rights by the owner of the patent may not be possible due to other the rights by the owner of the patent may not be possible due to other laws of the country which has awarded the patent. These laws may laws of the country which has awarded the patent. These laws may relate to health, safety, food, security etc. Further, existing patents in relate to health, safety, food, security etc. Further, existing patents in similar area may also come in the way.
similar area may also come in the way. A patent in
A patent in the law is the law is a property right a property right and hence, cand hence, can be an be gifted,gifted, inherited, assigned, sold or licensed. As the right is conferred by the inherited, assigned, sold or licensed. As the right is conferred by the State, it can be revoked by the State under very special circumstances State, it can be revoked by the State under very special circumstances even if the patent has been sold or licensed or manufactured or even if the patent has been sold or licensed or manufactured or marketed in the meantime. The patent right
marketed in the meantime. The patent right is territorial in nature andis territorial in nature and inventors/their assignees will have to file separate patent applications inventors/their assignees will have to file separate patent applications in countries of their interest, along with necessary fees, for obtaining in countries of their interest, along with necessary fees, for obtaining patents in those countries. A new chemical process or a
patents in those countries. A new chemical process or a drug moleculedrug molecule or an electronic circuit or a new surgical instrument or a vaccine is a or an electronic circuit or a new surgical instrument or a vaccine is a patentable subject matter provided all the stipulations of the law are patentable subject matter provided all the stipulations of the law are satisfied.
The Indian Patent Act The Indian Patent Act
The
The first first Indian Indian patent patent laws laws were were first first promulgated promulgated in in 1856.1856. These
These were were modified modified from from time time to to time. time. New New patent patent laws laws were were mademade after the independence in the form of the Indian Patent Act 1970. The after the independence in the form of the Indian Patent Act 1970. The Act has now been radically amended to become fully compliant with Act has now been radically amended to become fully compliant with the provisions of TRIPS. The most recent amendment were made in the provisions of TRIPS. The most recent amendment were made in 2005 which were preceded by the amendments in 2000 and 2003. 2005 which were preceded by the amendments in 2000 and 2003. While the process of bringing out amendments was going on, India While the process of bringing out amendments was going on, India became a member of the Paris Convention, Patent Cooperation Treaty became a member of the Paris Convention, Patent Cooperation Treaty and Budapest Treaty.
and Budapest Treaty. Definition of invention Definition of invention
A clear definition has now been provided for an invention, which A clear definition has now been provided for an invention, which makes it at par with definitions followed by most countries. Invention makes it at par with definitions followed by most countries. Invention means a new product or process involving an inventive step and means a new product or process involving an inventive step and capable of industrial application. New invention means any invention capable of industrial application. New invention means any invention or technology which has not been anticipated by publication in any or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification i.e., the date of filing of patent application with complete specification i.e., the subject matter has not fallen in public domain or it does not form part subject matter has not fallen in public domain or it does not form part of the state of the art.
of the state of the art.
Inventive step means a feature of an invention that involves Inventive step means a feature of an invention that involves technical advance as compared to existing knowledge or having technical advance as compared to existing knowledge or having economic significance or both and that makes the invention not economic significance or both and that makes the invention not obvious to a person skilled in the art. " capable of industrial obvious to a person skilled in the art. " capable of industrial application means that the invention is capable of being made or used application means that the invention is capable of being made or used in an industry"
a)
a) NoveltyNovelty
An invention will be considered novel if it does not form a part of An invention will be considered novel if it does not form a part of the global state of the art. Information appearing in magazines, the global state of the art. Information appearing in magazines, technical journals, books, newspapers etc. constitute the state of the technical journals, books, newspapers etc. constitute the state of the art. Oral description of the invention in a
art. Oral description of the invention in a seminar/conference can alsoseminar/conference can also spoil novelty.
spoil novelty.
Novelty is assessed in a global context. An invention will cease to Novelty is assessed in a global context. An invention will cease to be novel if it has been disclosed in the public through any type of be novel if it has been disclosed in the public through any type of publications anywhere in the world before filing a patent application in publications anywhere in the world before filing a patent application in respect of the invention. Therefore it is advisable to file a patent respect of the invention. Therefore it is advisable to file a patent application before publishing a paper if there is a slight chance that application before publishing a paper if there is a slight chance that the invention may be patentable. Prior use of the invention in the the invention may be patentable. Prior use of the invention in the country of interest before the filing date can also
country of interest before the filing date can also destroy the novelty.destroy the novelty. Novelty is determined through extensive literature and patent Novelty is determined through extensive literature and patent searches. It should be realized that patent search is essential and searches. It should be realized that patent search is essential and critical for ascertaining novelty as most of the information reported in critical for ascertaining novelty as most of the information reported in patent documents does not get published anywhere else. For an patent documents does not get published anywhere else. For an invention to be novel, it need not be a major breakthrough. No invention to be novel, it need not be a major breakthrough. No invention is small or big. Modifications to the existing state of the art, invention is small or big. Modifications to the existing state of the art, process or product or both, can also be candidates for patents process or product or both, can also be candidates for patents provided these were not earlier known. In a chemical process, for provided these were not earlier known. In a chemical process, for example, use of new reactants, use of a catalyst, new process example, use of new reactants, use of a catalyst, new process conditions can lead to a patentable invention.
conditions can lead to a patentable invention. b)
b) Inventiveness Inventiveness (Non-obviousness)(Non-obviousness)
A patent application involves an inventive step if the proposed A patent application involves an inventive step if the proposed invention is not obvious to
invention is not obvious to a person skilled in the art a person skilled in the art i.e., skilled in thei.e., skilled in the subject matter of the patent application. The prior art
towards the invention implying that the practitioner of the subject towards the invention implying that the practitioner of the subject matter could not have thought about the invention prior to filing of the matter could not have thought about the invention prior to filing of the patent application. Inventiveness cannot be decided on the material patent application. Inventiveness cannot be decided on the material contained in unpublished patents. The complexity or the simplicity of contained in unpublished patents. The complexity or the simplicity of an inventive step does not have any bearing on the grant of a patent. an inventive step does not have any bearing on the grant of a patent. In other words a very simple invention can qualify for a patent. If there In other words a very simple invention can qualify for a patent. If there is an inventive step between the proposed patent and the prior art at is an inventive step between the proposed patent and the prior art at that point of time, then an
that point of time, then an invention has taken place. A mere 'scintilla'invention has taken place. A mere 'scintilla' of invention is sufficient to found a valid patent. It may be often of invention is sufficient to found a valid patent. It may be often difficult to establish the inventiveness, especially in the area of up difficult to establish the inventiveness, especially in the area of up coming knowledge areas. The reason is that it would depend a great coming knowledge areas. The reason is that it would depend a great deal on the interpretative skills of the inventor and these skills will deal on the interpretative skills of the inventor and these skills will really be a function of knowledge in the
really be a function of knowledge in the subject area.subject area. c)
c) UsefulnessUsefulness
An invention must possess utility for the grant of patent. No An invention must possess utility for the grant of patent. No valid patent can be granted for an invention devoid of utility. The valid patent can be granted for an invention devoid of utility. The patent specification should spell out various uses and manner of patent specification should spell out various uses and manner of practicing them, even if considered obvious. If you are claiming a practicing them, even if considered obvious. If you are claiming a process, you need not describe the use of the compound produced process, you need not describe the use of the compound produced thereby. Nevertheless it would be safer to do so. But if you claim a thereby. Nevertheless it would be safer to do so. But if you claim a compound without spelling out its utility, you may be denied a
compound without spelling out its utility, you may be denied a patent.patent. The
The term term Patent Patent as as commonly commonly understood understood by by us us means means anan exclusive right granted by the appropriate government to the person exclusive right granted by the appropriate government to the person who had made an invention, to use that invention as well as sell it for who had made an invention, to use that invention as well as sell it for a fixed period of time.
a fixed period of time.
The grant of such a patent to the inven
The grant of such a patent to the inventor of any invention is onlytor of any invention is only for a fixed or limited period of time and thus after the expiry of such for a fixed or limited period of time and thus after the expiry of such
period, the patented invention passes on to the public domain. period, the patented invention passes on to the public domain. Now ,since a patent gives an exclusive right to the person to do Now ,since a patent gives an exclusive right to the person to do whatever he wants to do with his invention for his own benefit to the whatever he wants to do with his invention for his own benefit to the exclusion of others for a particular period of time ,therefore it is exclusion of others for a particular period of time ,therefore it is necessary to have a particular criteria to judge whether a particular necessary to have a particular criteria to judge whether a particular invention by any person should be patented or not .Therefore ,it is invention by any person should be patented or not .Therefore ,it is necessary to observe that all inventions are not patentable and thus necessary to observe that all inventions are not patentable and thus an invention can only be patented when it fulfills the criteria for an invention can only be patented when it fulfills the criteria for patentability as per the law.
patentability as per the law.
Although the Patentability Criteria differs from country to Although the Patentability Criteria differs from country to country depending on the law of the land, there exists some country depending on the law of the land, there exists some commonality between them. In order to be patentable, an invention commonality between them. In order to be patentable, an invention must be novel, have utility, and differ from what skilled users might must be novel, have utility, and differ from what skilled users might expect. These standard requirements are given different shapes by the expect. These standard requirements are given different shapes by the legislative and judicial systems of different countries.:
legislative and judicial systems of different countries.: Patentability Criteria under TRIPS
Patentability Criteria under TRIPS:: TRIPS
TRIPS is is one one of of the the most most contentious contentious agreements agreements of of the the WTOWTO which has been debated world-wide in the developed and developing which has been debated world-wide in the developed and developing countries and also in important international institutions. countries and also in important international institutions. “The TRIPS Patents System is based upon (a). The main features “The TRIPS Patents System is based upon (a). The main features of the TRIPS patent system are as follows: TRIPS provides for patent of the TRIPS patent system are as follows: TRIPS provides for patent protection for any inventions whether products or processes in all protection for any inventions whether products or processes in all fields of technology provided that they are new, involve an inventive fields of technology provided that they are new, involve an inventive step and are capable of industrial application.”
step and are capable of industrial application.”
Now since joint statement presented by the multinational Now since joint statement presented by the multinational associations of USA, Europe and Japan to the GATT Secretariat in associations of USA, Europe and Japan to the GATT Secretariat in June 1988 during
member of the WTO ,therefore it is under a binding obligation to member of the WTO ,therefore it is under a binding obligation to incorporate the provisions of TRIPS in their domestic laws and incorporate the provisions of TRIPS in their domestic laws and therefore with the enactment of Patents (Amendment) Act 2005, the therefore with the enactment of Patents (Amendment) Act 2005, the amending process of Indian Patents Act 1970 to bring it in line with amending process of Indian Patents Act 1970 to bring it in line with the TRIPS Agreement has been completed by the government by the TRIPS Agreement has been completed by the government by incorporating the following provisions in the Patents Act,1970 incorporating the following provisions in the Patents Act,1970 Clause (j) in Section 2,
Clause (j) in Section 2, which defines patentable invention as which defines patentable invention as "invention means a new product or process involving an inventive step "invention means a new product or process involving an inventive step and capable of industrial application". The earlier two amendments and capable of industrial application". The earlier two amendments were enacted by Parliament during 1999 and 2002.
were enacted by Parliament during 1999 and 2002. Clause(ja) in section 2
Clause(ja) in section 2 which defines "inventive step" as a feature of which defines "inventive step" as a feature of an invention that involves technical advance as compared to the an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art. makes the invention not obvious to a person skilled in the art. Clause (l) in section 2
Clause (l) in section 2 which defines "new invention" as which defines "new invention" as any inventionany invention or technology which has not been anticipated by publication in any or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form subject matter has not fallen in public domain or that it does not form part of the state of the
part of the state of the art.art.
Exceptions to Patentability
Exceptions to Patentability //Inventions Not PatentableInventions Not Patentable
Apart from satisfying the three prerequisites of novelty, inventive Apart from satisfying the three prerequisites of novelty, inventive step and industrial application, to qualify for a patent, an invention step and industrial application, to qualify for a patent, an invention should not be excluded from the categories mentioned in sections 3 should not be excluded from the categories mentioned in sections 3 and 4. These sections contain a list of inventions that are not and 4. These sections contain a list of inventions that are not
patentable. The list includes matters which are incapable of being the patentable. The list includes matters which are incapable of being the subject of legal monopoly, matters excluded by policy and matters subject of legal monopoly, matters excluded by policy and matters which are protect
which are protected by other ed by other forms of forms of intellectual propintellectual property rights.erty rights. Sec 3(a).
Sec 3(a). An inventAn invention whicion which is fh is frivolous orivolous or which r which claims anclaims anythingything obviously contrary to well established natural laws
obviously contrary to well established natural laws Sec 3(b).
Sec 3(b). An invention, An invention, the primary the primary or intended or intended use or use or commercialcommercial exploitation of which would be contrary to public order or morality or exploitation of which would be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or which causes serious prejudice to human, animal or plant life or health or to the environment
health or to the environment Sec
Sec 3(c). 3(c). The The mere mere discovery discovery of of a a scientific scientific principle principle or or thethe formulation of an abstract theory or discovery of any living thing or formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature
non-living substance occurring in nature Sec 3(d).
Sec 3(d). The mere The mere discovery of discovery of a new foa new form of rm of a known a known substancesubstance which does not result in the enhancement of the known efficacy of which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new machine or apparatus unless such known process results in a new product or employs at least one new reactant
product or employs at least one new reactant Sec 3(e).
Sec 3(e). A substance obA substance obtained by a tained by a mere admixturmere admixture resulting only e resulting only inin the aggregation of the properties of the components thereof or a the aggregation of the properties of the components thereof or a process for producing such
process for producing such substancesubstance Sec 3(f).
Sec 3(f). The merThe mere arrangemene arrangement or t or re-arrangement re-arrangement or duplicatioor duplication ofn of known devices each functioning independently of one another in a known devices each functioning independently of one another in a known way
known way Sec 3(g).
Sec 3(g). A method A method of agriculturof agriculture or e or horticulturehorticulture Sec
Sec 3(h). 3(h). Any Any process process for for the the medicinal, medicinal, surgical, surgical, curative,curative, prophylactic, diagnostic, therapeutic or other treatment of human prophylactic, diagnostic, therapeutic or other treatment of human
beings or any process for a similar treatment of animals to render beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their them free of disease or to increase their economic value or that of their products
products Sec 3(i).
Sec 3(i). Plants and Plants and animals in animals in whole or whole or any part thany part thereof other tereof other thanhan micro-organisms but including seeds, varieties and species and micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants essentially biological processes for production or propagation of plants and animals
and animals Sec
Sec 3(j). 3(j). A A mathematical mathematical or or business business method method or or a a computercomputer programme per se or algorithms
programme per se or algorithms Sec 3(k).
Sec 3(k). A literary, A literary, dramatic, mudramatic, musical or sical or artistic woartistic work or ark or any otherny other aesthetic creation whatsoever including cinematographic works and aesthetic creation whatsoever including cinematographic works and television productions.
television productions. Sec 3(l).
Sec 3(l). A mere schA mere scheme or rule or eme or rule or method of pmethod of performing mental act orerforming mental act or method of playing game
method of playing game Sec 3(m).
Sec 3(m). A prA presentation esentation of iof informationnformation Sec 3(n).
Sec 3(n). Topography Topography of of integrated integrated circuitscircuits Sec 3(o).
Sec 3(o). An inAn invention wvention which in hich in effect, is effect, is traditional traditional knowledge knowledge oror which is an aggregation or duplication of known properties of which is an aggregation or duplication of known properties of traditionally known component or components
traditionally known component or components Sec 3(p).
Sec 3(p). No Patent No Patent is granted is granted in respect in respect of an of an invention invention relating torelating to atomic energy falling within sub-section (1) of Section 20 of the
atomic energy falling within sub-section (1) of Section 20 of the AtomicAtomic Energy Act, 1962
Energy Act, 1962 I.
I. Frivolous inventions and inventions contrary to natural lawsFrivolous inventions and inventions contrary to natural laws Any invention which is frivolous or which claims anything Any invention which is frivolous or which claims anything obviously contrary to well established natural laws is not patentable. obviously contrary to well established natural laws is not patentable. An invention that lacks utility because it serves no purpose or use is An invention that lacks utility because it serves no purpose or use is called a frivolous invention. It was held in Indian Vacuum Brake Co. called a frivolous invention. It was held in Indian Vacuum Brake Co.
Ltd. v. E.S. Luard, that patent for making in one-piece articles which Ltd. v. E.S. Luard, that patent for making in one-piece articles which were formerly prepared in two or more pieces could not be called to be were formerly prepared in two or more pieces could not be called to be a valid patent and was frivolous. Mere usefulness is not sufficient to a valid patent and was frivolous. Mere usefulness is not sufficient to support the patent.
support the patent.
Recently there has been a flood gate of frivolous patents in the Recently there has been a flood gate of frivolous patents in the pharmaceutical sector. Section 3(d) of the Indian Patents Act is an pharmaceutical sector. Section 3(d) of the Indian Patents Act is an attempt to stop such frivolous patents.
attempt to stop such frivolous patents. II.
II. Inventions contrary to public order or Inventions contrary to public order or moralitymorality
Inventions whose primary or intended use or commercial Inventions whose primary or intended use or commercial exploitation is contrary to public order or morality or which causes exploitation is contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the serious prejudice to human, animal or plant life or health or to the environment are not patentable. The phrase ‘serious pre
environment are not patentable. The phrase ‘serious pre judice judice toto human, animal or plant life or health or to the environment’ was human, animal or plant life or health or to the environment’ was introduced to accommodate and clarify the expanding meaning of the introduced to accommodate and clarify the expanding meaning of the words ‘public order or morality’. The jurisprudence of the EPO words ‘public order or morality’. The jurisprudence of the EPO interpreting the scope and meaning of the words ‘pu
interpreting the scope and meaning of the words ‘public order orblic order or morality’ will be relevant as this provision is similar to art 53(a) of the morality’ will be relevant as this provision is similar to art 53(a) of the EPC.
EPC. III.
III. Discovery not an InventionDiscovery not an Invention
Generally an idea or a discovery cannot be a subject matter of a Generally an idea or a discovery cannot be a subject matter of a patent.A practical application of an idea or a discovery can, however, patent.A practical application of an idea or a discovery can, however, qualify for a patent. Such a discovery will be patentable even though qualify for a patent. Such a discovery will be patentable even though the practical application of the discovery is inherent in the discovery the practical application of the discovery is inherent in the discovery itself or becomes obvious once the discovery is made. Such a patent itself or becomes obvious once the discovery is made. Such a patent should claim the practical application of
should claim the practical application of the discovery as an invention.the discovery as an invention. A method of
A method of identifying diamonds by means of photographic records ofidentifying diamonds by means of photographic records of their X-ray diffraction patterns (topograms) was held to be a their X-ray diffraction patterns (topograms) was held to be a
patentable invention. Thus, mere discoveries or ideas cannot be the patentable invention. Thus, mere discoveries or ideas cannot be the subject matter of a patent, but discoveries or ideas which have a subject matter of a patent, but discoveries or ideas which have a technical aspect or make a technical contribution will be patentable. technical aspect or make a technical contribution will be patentable. IV.
IV. Inventions Pertaining to Known Substances etcInventions Pertaining to Known Substances etc
Section 3(d) includes a category of inventions pertaining to Section 3(d) includes a category of inventions pertaining to known substances and known processes that are not patentable. The known substances and known processes that are not patentable. The mere discovery of a new form of a known substance which does not mere discovery of a new form of a known substance which does not enhance the known efficacy of that substance is not patentable.
enhance the known efficacy of that substance is not patentable.
Similarly, the mere discovery of any new property or new use for a Similarly, the mere discovery of any new property or new use for a known substance or of a mere use of a known process, machine or known substance or of a mere use of a known process, machine or apparatus, unless such known process results in a new product or apparatus, unless such known process results in a new product or employs at least one new reactant, shall not be a subject matter of a employs at least one new reactant, shall not be a subject matter of a patent.
patent. V.
V. Invention Pertaining to Mere Admixture or ArrangementInvention Pertaining to Mere Admixture or Arrangement Section
Section 3 (e) of the Indian Patent Act 1970 provides that “a3 (e) of the Indian Patent Act 1970 provides that “a substance obtained by a mere admixture resulting only in the substance obtained by a mere admixture resulting only in the aggregation the properties of the components thereof or a process for aggregation the properties of the components thereof or a process for production such substance” is not
production such substance” is not patentable.patentable.
By “mere mixture of known ingredients” is meant a mixture By “mere mixture of known ingredients” is meant a mixture exhibiting only the aggregate of the known properties of the exhibiting only the aggregate of the known properties of the ingredients. Not only must the ingredients be known, but the property ingredients. Not only must the ingredients be known, but the property that makes the ingredients useful for the purpose of the invention that makes the ingredients useful for the purpose of the invention must also be known. If the result achieved by the invention is more must also be known. If the result achieved by the invention is more than might be expected from a mere mixture, the invention is than might be expected from a mere mixture, the invention is patentable.
patentable.
It is possible that a substance is not excluded from being a mere It is possible that a substance is not excluded from being a mere admixture merely on the basis that the physical form of an ingredient admixture merely on the basis that the physical form of an ingredient
has been changed, for example, sweet formed from a mixture of sugar has been changed, for example, sweet formed from a mixture of sugar and cellulo
and cellulose which se which has been has been turned turned hard by hard by boiling. boiling. In In order toorder to overcome the Section 3(e) barrier, a patentee is required to prove that overcome the Section 3(e) barrier, a patentee is required to prove that the combination of the known substances has resulted in a synergism the combination of the known substances has resulted in a synergism wherein the combination displays properties that are not displayed wherein the combination displays properties that are not displayed individually by each component.
individually by each component.
A mixture of different kinds of medicines, forming a cocktail of A mixture of different kinds of medicines, forming a cocktail of drugs, to cure multiple diseases will not be a
drugs, to cure multiple diseases will not be a patentable invention. Forpatentable invention. For instance, a composition of two drugs, i.e., Paracetamol and Ibuprofen instance, a composition of two drugs, i.e., Paracetamol and Ibuprofen for curing fever and pain or a process of preparation thereof, will not for curing fever and pain or a process of preparation thereof, will not be patentable as the composition is a mere admixture of two drug be patentable as the composition is a mere admixture of two drug components resulting in an aggregation of analgesic and components resulting in an aggregation of analgesic and anti-inflammatory actions.
inflammatory actions. VI.
VI. Method of TestingMethod of Testing
Section 3(g) in relation to method of testing now stands omitted Section 3(g) in relation to method of testing now stands omitted in the Patents Act. Consequently, a method of testing can now be a in the Patents Act. Consequently, a method of testing can now be a subject matter of a patent. A method of testing which could be applied subject matter of a patent. A method of testing which could be applied to the improvement or control of manufacture could qualify for a to the improvement or control of manufacture could qualify for a patent in the United Kingdom of their respective components.
patent in the United Kingdom of their respective components. VII.
VII. Method of agriculture or horticultureMethod of agriculture or horticulture
A method of agriculture or horticulture cannot be the subject A method of agriculture or horticulture cannot be the subject matter of a patent under the Patents Act. Tracing history, we find that matter of a patent under the Patents Act. Tracing history, we find that the Indian policy was based on the concept that plant varieties and the Indian policy was based on the concept that plant varieties and seeds were the common heritage of mankind. Though there was an seeds were the common heritage of mankind. Though there was an increase in the rate of growth in agriculture, the State could not meet increase in the rate of growth in agriculture, the State could not meet the rising demand for the food. The need for attaining self sufficiency the rising demand for the food. The need for attaining self sufficiency in food led to the pursuit of the green revolution. During the colonial in food led to the pursuit of the green revolution. During the colonial
period, food production was on the decline. Land reforms had a great period, food production was on the decline. Land reforms had a great impact on the agrarian structure. The rise of the modern technology impact on the agrarian structure. The rise of the modern technology culminated in agriculture research. This formed the foundation of culminated in agriculture research. This formed the foundation of technological farming. The vision of our forefathers was towards technological farming. The vision of our forefathers was towards alleviation of poverty.
alleviation of poverty. This
This could could be be done done only only by by attaining attaining self-sufficiency self-sufficiency in in foodfood production which could be obtained only by excluding methods of production which could be obtained only by excluding methods of agriculture from protection. Large population of the country derives agriculture from protection. Large population of the country derives their livelihood from agriculture. Agriculture is the back bone of their livelihood from agriculture. Agriculture is the back bone of India’s economy. Small and marginal farmers predominate India’s economy. Small and marginal farmers predominate agriculture. The main aim of excluding methods of agriculture from agriculture. The main aim of excluding methods of agriculture from protection was to alleviate poverty and also to ensure that there would protection was to alleviate poverty and also to ensure that there would be self-sufficiency in food sector .
be self-sufficiency in food sector . VIII.
VIII. Methods of Medical Treatment of Human and AnimalsMethods of Medical Treatment of Human and Animals
Any process for the medicinal, surgical, curative, prophylactic, Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free from process for a similar treatment of animals to render them free from disease or to increase their economic value cannot be a subject matter disease or to increase their economic value cannot be a subject matter of patent. A method of medical treatment for an ailment is not a of patent. A method of medical treatment for an ailment is not a patent eligible subject-matter. A process consisting of the use of a patent eligible subject-matter. A process consisting of the use of a known compound for treating a human being medically has never known compound for treating a human being medically has never been held to
been held to be patentable because courts have consistently expressedbe patentable because courts have consistently expressed the opinion that a process for medical treatment of human beings is the opinion that a process for medical treatment of human beings is not a proper subject for a
not a proper subject for a patent monopoly.patent monopoly. IX.
IX. Plants and Animal VarietiesPlants and Animal Varieties
Plants and animals, in whole or in their parts, are excluded from Plants and animals, in whole or in their parts, are excluded from patent protection. Seeds, varieties and species are also included under patent protection. Seeds, varieties and species are also included under
the section 3(j). The section also excludes ‘essentially biological the section 3(j). The section also excludes ‘essentially biological processes’. However, micro
processes’. However, micro-organisms can be a patentable invention.-organisms can be a patentable invention. Plant varieties are protected by a sui generis system under the Plant varieties are protected by a sui generis system under the Protection of Plant Varieties and Farmers’ Right Act 2001.
Protection of Plant Varieties and Farmers’ Right Act 2001.
In the field of biotechnology, inventions may be made with respect to In the field of biotechnology, inventions may be made with respect to the following:
the following:
(a) Living entity of natural origin (like animal, plant, human beings (a) Living entity of natural origin (like animal, plant, human beings including parts thereof);
including parts thereof);
(b) Living entity of artificial origin (like micro-organism, vaccines, (b) Living entity of artificial origin (like micro-organism, vaccines, transgenic animals and plants etc);
transgenic animals and plants etc);
(c) Biological materials (like DNA, plasmids, genes, vector, tissues, (c) Biological materials (like DNA, plasmids, genes, vector, tissues, cells, replicons etc); and
cells, replicons etc); and
(d) Biological processes (like process relating to living entities, process (d) Biological processes (like process relating to living entities, process relating to biological materials, methods of treatment of human or relating to biological materials, methods of treatment of human or animal body, essentially biological process).
animal body, essentially biological process).
As in the case of an invention in any other field of technology, the As in the case of an invention in any other field of technology, the three prerequisites of patentability, i.e., novelty, inventive step and three prerequisites of patentability, i.e., novelty, inventive step and industrial application, have to be satisfied for the grant of a patent for industrial application, have to be satisfied for the grant of a patent for a biotechnological invention. The application of these standards has a biotechnological invention. The application of these standards has lead to differing
lead to differing practices between countries.practices between countries. According to
According to section 3(j), patents shall not be granted for ‘plants andsection 3(j), patents shall not be granted for ‘plants and animals in whole or any part thereof other than micro-organisms but animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals’
processes for production or propagation of plants and animals’ . The. The above section is modeled on article 27.3(b) of the TRIPS
Section 3(j) of the Patents Act deals with three broad classes, which Section 3(j) of the Patents Act deals with three broad classes, which are: ‘microorganisms’, ‘essentially biological processes’ and ‘plants and are: ‘microorganisms’, ‘essentially biological processes’ and ‘plants and animals’.
animals’.
Micro-organisms Micro-organisms
Microbiological inventions generally involve the use of new strain Microbiological inventions generally involve the use of new strain of microorganism to produce a new compound or to produce a known of microorganism to produce a new compound or to produce a known compound more efficiently. The new organism may have been found in compound more efficiently. The new organism may have been found in nature or may have been produced in the laboratory by artificially nature or may have been produced in the laboratory by artificially induced random mutation or more specific techniques such as genetic induced random mutation or more specific techniques such as genetic engineering.
engineering.
If the microorganism produces a novel product, such as a new If the microorganism produces a novel product, such as a new antibiotic of which the structure has been determined or which can be antibiotic of which the structure has been determined or which can be characterized by a ‘fingerprint claim’ then the novel product may be characterized by a ‘fingerprint claim’ then the novel product may be claimed as any other new chemical compound and subject to the claimed as any other new chemical compound and subject to the requirements of a sufficient description, may be granted patent. If the requirements of a sufficient description, may be granted patent. If the end product is already known, process protection is available, but this end product is already known, process protection is available, but this protection is weak and it would be preferable to patent the new protection is weak and it would be preferable to patent the new organism itself.
organism itself.
Most patent laws do not deal with the
Most patent laws do not deal with the question of whether or notquestion of whether or not a new living strain of microorganism is itself-patentable, but the UK a new living strain of microorganism is itself-patentable, but the UK Patent Act 1977 and EPC do not exclude the possibility. Plant and Patent Act 1977 and EPC do not exclude the possibility. Plant and animal varieties are excluded from protection as is any biological animal varieties are excluded from protection as is any biological process for their production, but not excluded is a microbiological process for their production, but not excluded is a microbiological process or the product of such a process, which may of course be a process or the product of such a process, which may of course be a microorganism. Most of the countries including India did not grant microorganism. Most of the countries including India did not grant patents for microorganisms per se. The TRIPs agreement makes it patents for microorganisms per se. The TRIPs agreement makes it obligatory for all WTO members, after the end of applicable transition obligatory for all WTO members, after the end of applicable transition
period, to grant patents for microorganisms. If the microorganism is period, to grant patents for microorganisms. If the microorganism is one, which occurs in nature, it will be necessary to claim it in the form one, which occurs in nature, it will be necessary to claim it in the form of an isolated strain, in order to avoid possible novelty objections. The of an isolated strain, in order to avoid possible novelty objections. The term microorganism is interpreted broadly so as to include not only term microorganism is interpreted broadly so as to include not only bacteria and fungi but also viruses and animal and
bacteria and fungi but also viruses and animal and plant cells.plant cells.
In USA, in spite of the precedent of the Pasteur patent, it had In USA, in spite of the precedent of the Pasteur patent, it had become the practice of the patent office to refuse claims to living become the practice of the patent office to refuse claims to living system as not being patentable subject matter. In 1980 however, the system as not being patentable subject matter. In 1980 however, the Supreme Court decided in the famous
Supreme Court decided in the famous Ch Ch akrabarthy’sakrabarthy’s case,case, that a that a new strain of bacteria produced artificially (by bacterial new strain of bacteria produced artificially (by bacterial recombination) was patentable invention. Although, Chakrabarthy’s recombination) was patentable invention. Although, Chakrabarthy’s bacteria did not produce a useful product
bacteria did not produce a useful product they had the useful propertythey had the useful property that could feed on and disperse, oil slicks. Since the product, which that could feed on and disperse, oil slicks. Since the product, which would be sold, would be the bacterial strain itself, it was particularly would be sold, would be the bacterial strain itself, it was particularly important in this case to obtain per se
important in this case to obtain per se claim to the microorganism.claim to the microorganism. Section 3(j) of the Indian Patents Act allows for patents for Section 3(j) of the Indian Patents Act allows for patents for micro-organisms. It is worded in the form of an exception to an micro-organisms. It is worded in the form of an exception to an exception. The permissibility of patenting micro-organisms was exception. The permissibility of patenting micro-organisms was considered in
considered in Dimminaco AG v. Controller of patents and designs Dimminaco AG v. Controller of patents and designs ,, a case which involved an invention relating to a process for a case which involved an invention relating to a process for preparation of infectious Bursitis vaccine for protecting poultry. The preparation of infectious Bursitis vaccine for protecting poultry. The Assistant Controller of Patents and Designs rejected the
Assistant Controller of Patents and Designs rejected the application onapplication on the ground that it did not
the ground that it did not constitute an invention under section 2(1) (j)constitute an invention under section 2(1) (j) of the Patents Act, holding that the process of preparing the vaccine of the Patents Act, holding that the process of preparing the vaccine which contains a living virus cannot be considered as ‘manufacture’ which contains a living virus cannot be considered as ‘manufacture’ under the old definition of invention. On an appeal preferred under under the old definition of invention. On an appeal preferred under section 116 of the Patents Act to the Calcutta High Court, the court section 116 of the Patents Act to the Calcutta High Court, the court
took into account the practice of the Patent Office in granting patents took into account the practice of the Patent Office in granting patents for end products containing living virus and quashed the order of the for end products containing living virus and quashed the order of the Controller and directed the reconsideration of
Controller and directed the reconsideration of the patent application.the patent application. The above case was dec
The above case was decided under the provisions of tided under the provisions of the Patentshe Patents Act before the Patents (Amendment) Act 2002 came into force. The Act before the Patents (Amendment) Act 2002 came into force. The said Amendment introduces section 3(j) which allows patents for said Amendment introduces section 3(j) which allows patents for micro-organisms.
micro-organisms.
Indian Patents Act has defined invention ‘to mean a new Indian Patents Act has defined invention ‘to mean a new product or process involving an inventive step and capable of product or process involving an inventive step and capable of industrial application. The Act gives a list of exclusions, which states industrial application. The Act gives a list of exclusions, which states that, “Plants and animals in whole or any part thereof other than that, “Plants and animals in whole or any part thereof other than microorganisms cannot be patented”. So microorganisms are microorganisms cannot be patented”. So microorganisms are patentable in India provided they satisfy the criteria of
patentable in India provided they satisfy the criteria of patentability.patentability. But the Act has not defined what constitutes microorganisms. But the Act has not defined what constitutes microorganisms. The
The judiciary, judiciary, while while dealing dealing with with the the catena catena of of cases, cases, has has made made anan attempt to define microorganism.
attempt to define microorganism. InIn Green Peace Ltd v. PlantGreen Peace Ltd v. Plant Genetic Systems N.V.,
Genetic Systems N.V., the Technical Board of Appeal of the the Technical Board of Appeal of the EuropeanEuropean Patent Office has attempted definition of microorganisms. It states: Patent Office has attempted definition of microorganisms. It states: “…….Microorganisms includes not only bacteria and yeasts, but also “…….Microorganisms includes not only bacteria and yeasts, but also fungi, algae, protozoa, human, animal and plant cells, i.e. all generally fungi, algae, protozoa, human, animal and plant cells, i.e. all generally unicellular organisms with dimensions beneath the limits of vision unicellular organisms with dimensions beneath the limits of vision which can be propagated and manipulated in a laboratory. Plasmids which can be propagated and manipulated in a laboratory. Plasmids and viruses are also contained to fall under these
and viruses are also contained to fall under these inventionsinventions X.
X. Business Method, Computer Program etc.Business Method, Computer Program etc.
A mathematical or business method or a computer program A mathematical or business method or a computer program per se or algorith
per se or algorithms is not patentablms is not patentable under the Patee under the Patents Act. nts Act. In India,In India, patent protection is not afforded to business methods and computer patent protection is not afforded to business methods and computer
programs though Article 27 of the TRIPs agreement does not exclude programs though Article 27 of the TRIPs agreement does not exclude them from patentability. Computer programs are e
them from patentability. Computer programs are excluded from patentxcluded from patent protection as they are protected as
protection as they are protected as a literary work under the a literary work under the CopyrightCopyright Act 1957.
Act 1957.
Though
Though patent patent for for a a computer computer program program per per se se is is notnot patentable, a claim expressed as a computer arranged to produce a patentable, a claim expressed as a computer arranged to produce a particular result, and computer programs which have the effect of particular result, and computer programs which have the effect of controlling computers to operate in a particular way may be the controlling computers to operate in a particular way may be the subject matter of a patent. The prevailing view is that where the subject matter of a patent. The prevailing view is that where the subject
subject matter matter as as claimed claimed makes makes a ta technical contrechnical contribution ibution to thto thee known art, the patentability should not be denied merely on the known art, the patentability should not be denied merely on the ground that a computer program was involved in its implementation. ground that a computer program was involved in its implementation. XI.
XI. Literary, dramatic, musical or artistic work etcLiterary, dramatic, musical or artistic work etc The
The subject-matter subject-matter of of a a literary, literary, dramatic, dramatic, musical musical or or artisticartistic work is protectable under the Copyright Act. The protection is for the work is protectable under the Copyright Act. The protection is for the original expression of the idea and not for the idea. Moreover, the original expression of the idea and not for the idea. Moreover, the requirements for obtaining a patent protection cannot be satisfied in requirements for obtaining a patent protection cannot be satisfied in the case of the above
the case of the above works.works.
A copyright infringement action may be clubbed along with a A copyright infringement action may be clubbed along with a suit for infringement of a patent if
suit for infringement of a patent if both the issues flow from a commonboth the issues flow from a common set of action as specified in
set of action as specified in Gandhimati Appliances Ltd. v. LGGandhimati Appliances Ltd. v. LG Varadaraju
Varadaraju 2003 3 MLJ 85 (DB).2003 3 MLJ 85 (DB). XII.
XII. Scheme or RuleScheme or Rule
A scheme does not amount to a manner of manufacture as it is A scheme does not amount to a manner of manufacture as it is a mere idea. Here too, an exception is entertained with regard to those a mere idea. Here too, an exception is entertained with regard to those ideas which could have a practical effect. Every invention should have ideas which could have a practical effect. Every invention should have begun as an idea. An invention may lie in an idea or in the way in begun as an idea. An invention may lie in an idea or in the way in
which the idea is carried out or both. Such an idea must either which the idea is carried out or both. Such an idea must either suggest a new way of making something or it should show a new way suggest a new way of making something or it should show a new way of producing a new article
of producing a new article XIII.
XIII. Presentation of InformationPresentation of Information
Section 3(n) of Patents Act excludes a presentation of Section 3(n) of Patents Act excludes a presentation of information from the ambit of patent protection. An invention in order information from the ambit of patent protection. An invention in order to obtain patent protection should have a technical result. In to obtain patent protection should have a technical result. In Marker/Beattie,38 the invention consisted of an apparatus for and a Marker/Beattie,38 the invention consisted of an apparatus for and a method of learning how to play a keyboard instrument, with numbers method of learning how to play a keyboard instrument, with numbers corresponding to notes on a sheet of music appearing on the keys too. corresponding to notes on a sheet of music appearing on the keys too. The
The patent patent application application was was for for a a marker marker to to be be laid laid on on a a musicalmusical keyboard to facilitate learning music. The technical feature claimed keyboard to facilitate learning music. The technical feature claimed was the marking of the keys. Patentability was ruled out by Article was the marking of the keys. Patentability was ruled out by Article 52(2) (c) and (d), EPC. Since the key markings were merely known 52(2) (c) and (d), EPC. Since the key markings were merely known technical features, the contribution made by the claimed invention to technical features, the contribution made by the claimed invention to the working of the teaching apparatus lay solely in the content of the the working of the teaching apparatus lay solely in the content of the information displayed, not in the apparatus itself it was held to be not information displayed, not in the apparatus itself it was held to be not patentable .
patentable . XIV.
XIV. Topography of integrated circuitsTopography of integrated circuits Topography
Topography of of integrated integrated circuits circuits cannot cannot be be the the subject subject matter matter of of aa patent protection.Topographies or lay-out designs of Integrated patent protection.Topographies or lay-out designs of Integrated circuits are protected by the Semiconductor Integrated Circuits circuits are protected by the Semiconductor Integrated Circuits Layout- Design Act, 2000.
Layout- Design Act, 2000. XV.
XV. Traditional KnowledgeTraditional Knowledge
An invention which is a part of
An invention which is a part of traditional knowledge cannot betraditional knowledge cannot be the subject matter of a patent.
the subject matter of a patent. Similarly, an aggregation or duplicationSimilarly, an aggregation or duplication of known properties of traditionally known component or components of known properties of traditionally known component or components
is also excluded from patent protection. An invention based on is also excluded from patent protection. An invention based on traditional knowledge may be opposed or revoked under the Patents traditional knowledge may be opposed or revoked under the Patents Act on the ground that the invention is anticipated.42 Clause 19 of Act on the ground that the invention is anticipated.42 Clause 19 of the Doha Declaration provides that the Council for TRIPs shall review the Doha Declaration provides that the Council for TRIPs shall review the implementation of the TRIPs agreement and examine, among other the implementation of the TRIPs agreement and examine, among other things, the relationship between the TRIPs agreement and the things, the relationship between the TRIPs agreement and the Convention on Biological Diversity, the protection of traditional Convention on Biological Diversity, the protection of traditional knowledge and folklore, and
knowledge and folklore, and other relevant new developments.other relevant new developments. XVI.
XVI. Inventions Relating to Atomic EnergyInventions Relating to Atomic Energy
Section 4 prohibits the grant of patents for inventions relating Section 4 prohibits the grant of patents for inventions relating to atomic energy. It is widely accepted that countries can provide for to atomic energy. It is widely accepted that countries can provide for security exc
security exceptions foeptions for the r the protection protection of esof essential ssential security intecurity interestserests relating to fissionable material. Even if a patent is granted for an relating to fissionable material. Even if a patent is granted for an invention relating to atomic energy, the same may be revoked under invention relating to atomic energy, the same may be revoked under section 65 of the Patents Act. The provision relating to atomic energy section 65 of the Patents Act. The provision relating to atomic energy inventions are contained in section 20 of the Atomic Energy
inventions are contained in section 20 of the Atomic Energy Act 1962.Act 1962. Conclusion
Conclusion
In practice, several issues remain open. Law cannot be static. In practice, several issues remain open. Law cannot be static. It has to be modified to meet the requirements of the fast changing It has to be modified to meet the requirements of the fast changing environment. Similarly, science is also not static and changes are environment. Similarly, science is also not static and changes are taking place at a very fast pace. Since patent is related to science & taking place at a very fast pace. Since patent is related to science & technology, the patent legislations cannot also be static. This is based technology, the patent legislations cannot also be static. This is based on the fact that our country possesses the highly capable intellectuals on the fact that our country possesses the highly capable intellectuals and natural wealth, and that too in plenty. Combining these two and natural wealth, and that too in plenty. Combining these two valuable strengths/assets, we could have become a country holding valuable strengths/assets, we could have become a country holding valuable IPRs which would have helped economical and industrial valuable IPRs which would have helped economical and industrial development of the country even faster.
Therefore
Therefore ,the ,the Patent Patent Act, Act, 1970 1970 in in India India dealing dealing with with thethe Patentability criteria should be modified to such an extent so as to Patentability criteria should be modified to such an extent so as to make them as stringent as possible while granting patents to make them as stringent as possible while granting patents to inventions in field of medicines, so that the concern for the poor and inventions in field of medicines, so that the concern for the poor and the critical health situation in India should be taken care of .For the critical health situation in India should be taken care of .For example ,an invention which can cure a deadly disease like cancer example ,an invention which can cure a deadly disease like cancer shall not be easily allowed to be patented under the Patent Laws in shall not be easily allowed to be patented under the Patent Laws in India as granting of Patent to such an invention will not serve the India as granting of Patent to such an invention will not serve the general purpose of curing Poor people who constitutes majority of our general purpose of curing Poor people who constitutes majority of our population, as the inventor of such patented medicine will be having population, as the inventor of such patented medicine will be having the exclusive rights to make and sell that medicines at a discretionary the exclusive rights to make and sell that medicines at a discretionary price which can only be afforded by the rich and elite class of people. price which can only be afforded by the rich and elite class of people. It is important to note that the Patents Act, 1970 was amended in It is important to note that the Patents Act, 1970 was amended in 1999, wherein only Product Patent can be granted to the inventions in 1999, wherein only Product Patent can be granted to the inventions in field of Medicines and compounds, to the exclusion of Process Patent field of Medicines and compounds, to the exclusion of Process Patent and thus further cementing the above views mentioned therein. and thus further cementing the above views mentioned therein.
Thus,
Thus, the the degree degree of of flexibility flexibility in in the the Patentability Patentability Criteria Criteria ofof Novelty, Usefulness and Non-Obviousness while granting or refusing Novelty, Usefulness and Non-Obviousness while granting or refusing to grant a patent to an invention shall differ from invention to to grant a patent to an invention shall differ from invention to invention and the patent office has to take into consideration all the invention and the patent office has to take into consideration all the Benefits and losses to the Inventor as well as the General Community Benefits and losses to the Inventor as well as the General Community while granting or refusing to grant a patent to an invention in any field while granting or refusing to grant a patent to an invention in any field of Art to which it
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