Patentable and Non-Patentable Inventions

Ritika Pandey, a 3rd year Student from Galgotias University has written this Article on” Patentable and Non-Patentable Inventions”

INTRODUCTION

A Patent is a form of industrial property and is now included in the ambit of intellectual property. It is an exclusive right that is given to a person who invents a new and valuable product or who improves an already existing product and develops a new manufacturing method or technology.

The objective of the Patent is to inspire individuals to create new technology and advance the sector. The awarding of patents provides the patentee with exclusive rights over his intellectual property and advances technology in the following ways:

• It promotes innovative research and invention.
• It pays prizes to the inventors so they can cover the costs of the invention until they are commercially feasible.
• It persuades an inventor to share his creation rather than preserve it as a trade secret.
• It motivates the innovator to put money into innovative technologies to fulfill industrial needs.

A patent application can be filed either by the true and first inventor or his assignee, either alone or jointly with any other person. However, the legal representative of any deceased person can also make an application for a patent.

PATENTABILITY CRITERIAS

As per Section 2(j) of the Patents Act, 1970 [1]“invention” means a new product or process involving an inventive step and capable of industrial application.” Before getting patent rights, an invention has to pass certain tests and fulfill some requirements. These requirements work as the principles of patent law in India. These are:

• The invention must be new (Novelty)
• It must involve an Inventive step
• It must be capable of Industrial Application

NOVELTY

An invention must be new and unique in itself. It should not be a prior art and there should have been no prior publication of it. As per Section 2(l) of the Patents (Amendment) Act, 2005 [2]”new invention” means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of a patent application with complete specification, i.e., the subject matter has not fallen in the public domain or that it does not form part of the state of the art. The invention must involve newness and should be original. An invention should be novel with reference to a single prior art and not in reference to a combination of prior arts.

INVENTIVE STEP

By saying that an invention should involve inventive steps it means:

• It should be technically advanced in light of prior art.
• It should have economic significance.
• It should be non-obvious to a person skilled in that art.

 Section 2(ja) of the Patents Act, 1970 [3]defines an inventive step as “a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.”

INDUSTRIAL APPLICATION

An invention must have some utility and should be capable of industrial application. The invention cannot be granted patent rights only on the grounds of novelty and inventive step, it should also have some utility. The invention must have commercial use and should be utilized in industries. Mere usefulness is not enough

It should not fall under the subject of non-patentable inventions.

NON-PATENTABLE INVENTIONS

Chapter II of the Patent Act, of 1970 deals with Inventions not Patentable. Any invention that falls under the ambit of Sections 3 & 4 cannot be patented.

As per Section 3 of the Patents Act, 1970[4], —The following are not inventions within the meaning of this Act —

 (a) an invention that is frivolous or which claims anything obviously contrary to well-established natural laws;

 (b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal, or plant life or health or to the environment;

 (c)the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;

 (d) the mere discovery of a new form of a known substance that does not result in the enhancement of the known efficacy of 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, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

Explanation

For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;

 (e) a substance obtained by a mere admixture resulting only in the aggregation of the

properties of the components thereof or a process for producing such substance;

 (f) the mere arrangement or re-arrangement or duplication of known devices each

functioning independently of one another in a known way;

 (g) Omitted by the Patents (Amendment) Act, 2002

 (h) a method of agriculture or horticulture;

 (i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic, or other treatment of human 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 products.

(j) plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties, and species and essentially biological processes for production or propagation of plants and animals;

(k) a mathematical or business method or a computer program per se or algorithms;

(l) a literary, dramatic, musical, or artistic work or any other aesthetic creation whatsoever

including cinematographic works and television productions;

(m) a mere scheme or rule or method of performing a mental act or method of playing a game;

(n) a presentation of information;

(o) topography of integrated circuits;

(p) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known components or components.

Section 4 of Patents Act, 1970

Section 4 of the Patents Act, 1970 [5] deals with inventions relating to atomic energy. It states that “No patent shall be granted in respect of an invention relating to atomic energy falling within sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962)[6].”

Section 20(1) of the Atomic Energy Act, 1962 (33 of 1962) states that- “as from the commencement of this Act, no patents shall be granted for inventions which in the opinion of the Central Government are useful for or relate to the production, control, use or disposal of atomic energy or the prospecting, mining, extraction, production, physical and chemical treatment, fabrication, enrichment, canning or use of any prescribed substance or radioactive substance or the ensuring of safety in atomic energy operations.”

GROUNDS OF OPPOSITION TO PATENTS

PRE-GRANT OPPOSITION

When the application for the patent has been published by the authorities but the patent has still not been granted, the opposition can be raised to the Controller by any person, on the grounds mentioned below.

• that the applicant for the patent or the person under or through whom he claims wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;
  • that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim—in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January 1912; or in India or elsewhere, in any other document:

Provided that the ground specified in sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue of sub-section (2) or subsection (3) of section 29;

• that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant’s claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant’s claim;
  • that the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim.

Explanation

For the purposes of this clause, an invention relating to a process for which a patent is claimed shall be deemed to have been publicly known or publicly used in India before the priority date of the claim if a product made by that process had already been imported into India before that date except where such importation has been for the purpose of reasonable trial or experiment only;

• that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;
  • that the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act;
  • that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;
  • that the applicant has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge;
• that in the case of a convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title;
• that the complete specification does not disclose or wrongly mention the source or geographical origin of biological material used for the invention;
• that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere,

but on no other ground, and the Controller shall, if requested by such person for being heard, hear him and dispose of such representation in such manner and within such period as may be prescribed.

POST-GRANT OPPOSITION

Any person can raise an objection within one year of the grant of patent rights to the Controller by way of notice, on the grounds mentioned below.

• that the patentee or the person under or through whom he claims, wrongfully
  • obtained the invention or any part thereof from him or from a person under orthrough whom he claims;
  • that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim—in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January 1912; or in India or elsewhere, in any other document:

Provided that the ground specified in sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue of sub-section (2) or sub-section (3) of section 29;

• that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the claim of the patentee and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the claim of the patentee;
  • that the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim.

Explanation

For the purposes of this clause, an invention relating to a process for which a patent is granted shall be deemed to have been publicly known or publicly used in India before the priority date of the claim if a product made by that process had already been imported into India before that date except where such importation has been for the purpose of reasonable trial or experiment only;

• that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the claim;
  • that the subject of any claim of the complete specification is not an invention within the meaning of this Act or is not patentable under this Act;that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;that the patentee has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge;that in the case of a patent granted on a convention application, the application for the patent was not made within twelve months from the date of the first application for protection for the invention made in a convention country or in India by the patentee or a person from whom he derives title;that the complete specification does not disclose or wrongly mention the source and geographical origin of biological material used for the invention;
  • that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere, but on no other ground.

[1] The Patents Act,1970 2(j)

[2] Patents (Amendment) Act, 2005 2(l)

[3] The Patents Act,19702(ja)

[4] Patents Act,1970 3

[5] The Patents Act,1970 4

[6] Atomic Energy Act, 1962 20(1)