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 When a person uses his intellect to invent something new, he must be rewarded for the same. Patent protection is granted to such inventions, so that no one else can copy or use those inventions without the permission of the Inventor. This gives monopoly rights to the inventor to use his invention however he likes and is considered a reward. This not only encourages more inventions but also contributes to the development of a country.

The word “patent” has been derived from the Latin word “patere” which means “to lay open,” or to make available for public at large.

A ‘Patent’ is an intellectual property right which protects any new invention. It is an exclusive right that protects the rights of the inventor and prevents other people to unauthorizedly use and misappropriate the registered patent. A patent is granted for a term of 20 years from the date of filling of the application.

Patents being territorial in nature are valid only in those countries where the applicant has actually applied and received patent protection. For example, a person has registered his invention of a massaging sofa-chair in India. So, the patent protection would be available only in India. If someone in America is copying his invention, he has no power to take any action for his patent is not registered in America.

In India, Patents are governed by Indian Patents Act, 1970. A person who has obtained a patent is called “Patentee” or a “Patent-holder.”

Types of Patents

Depending upon what is protected by the patent, the patents are classified into many types which are as follows:

• Product patent – This is the patent which protects the actual invention. No one else can manufacture the same invention without the permission of the Patentee. This is especially helpful in addressing reverse engineered manufacturing.
• Process Patent – The process of manufacturing the invention or a new way of manufacturing an existing product can be patented under Process patent.

There are also utility patents which protect processes, compositions of matter, machines. Design patents are used to patent designs or exterior ornamental design on something.

Patentability Criteria

According to Section 2(j) of the Indian Patent Act, 1970, an invention means “a new product or process involving an inventive step and capable of industrial application.” This definition highlights as to what qualifies to be a patentable invention.

An invention to be patentable must:

1. Not be under Sec.3 and 4 of the Indian Patents Act, 1970 (patentable subject-matter)
2. Novelty
3. Utility
4. Non-obviousness

1.Patentable Subject-matter:

Any invention that comes under Sec. 3 and 4 of the Patents Act, 1970 cannot be patented. Some of the subject-matters listed under Sec. 3 are:

1. Frivolous invention – invention against the laws of nature or without any purpose. For example, a device that can give answer without any inputs or a device that can boost even 100% efficiency.
2. Inventions against morality or public order – Inventions like a device that can cleanup after murder, a device that can open locked cars, a device used to cheat in exams etc.
3. Mere discovery of naturally occurring substances – The mere formulation of an abstract theory, the finding of any living entity or non-living object happening in nature, or the discovery of any scientific principle is not enough. There must be some human ingenuity involved to make it patentable.

Diamond v. Chakrabarty[1]– The scientists added 4 plasmids to a bacterium, which enabled it to breakdown various components of crude oil. This was opposed on the grounds that it was only a discovery of a naturally occurring bacteria. The Court held that the bacterium was modified because the inventor had added plasmids and that could be patented for it was a non-naturally occurring manufacture or a composition of human ingenuity having distinct character and use.

Association for Molecular Biology v. Myriad Genetics[2] – Myriad discovered the precise location and sequence of 2 human genes BRCA1 and BRCA2, mutations of which could   increase the risk of breast and ovarian cancer. This knowledge was used to test the cancer risk of patients and Myriad obtained a number of patents on this. Later, the Petitioner filed a suit that Myriad’s patents were invalid under S.101 of US Code for being mere discovery of naturally occurring substance. The US SC revoked the patent as there was no modification of the genes and therefore, it did not create anything. It was merely a discovery of naturally occurring substance.

4. Mere discovery that does not enhance any knowledge

Mere discovery of substances like new salts or new forms of a new substance that does not add to any existing knowledge cannot be patented.

Novartis AG v. UOI[3] – The case arose on the order of rejection of Novartis AG’s application for a patent on a product named Gleevec/Glivec, used for treating blood cancer (leukamia) and Gastro-Intestinal Stromal Tumours (GIST). The Cancer Patients Aid Association of India, Mumbai, and the companies producing the generic versions of the product opposed the grant of patent as it lacked novelty, was obvious to a person skilled in the art, and that it was merely a “new form” of a “known substance” and that as required by the new section 3(d) there was no proof of enhancement in the efficacy of the substance. The Patent Office refused to grant patent on the ground that it did not meet the requirement of the new section 3(d).

After appealing before IPAB, Madras HC, the SC was finally approached. Dismissing the appeals filed by Novartis, the Supreme Court stated: “We have, therefore, no doubt that the amendment/addition made in section 3(d) is meant especially to deal with chemical substances, and more particularly pharmaceutical products. The amended portion of section 3(d) clearly sets up a second tier of qualifying standards for chemical substances/ pharmaceutical products in order to leave the door open for true and genuine inventions but, at the same time, to check any attempt at repetitive patenting or extension of the patent term on spurious grounds.“

5. A substance obtained by a mere admixture resulting only in the aggregation of the properties of the component

6. Mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way

7. Section 3(h): a method of agriculture or horticulture; A method of agriculture or horticulture is not patentable as it would not be capable

8. Section 3 (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.

Nuziveedu Seeds Limited and others v. Monsanto Technology LLC[4]– Nuziveedu Seeds Limited and others filed for the revocation of patent on the ground that the technology is not an invention but a mere discovery and as such is not a patentable invention under section 3(j) of the Patents Act, 1970.

Diamond v. Chakrabarty[5]

9. section 3(k), a mathematical methods, business methods, computer programmes per se and algorithms are not considered as patentable subject matter.

Sony Communication Network v. USPTO – The subject of the application was of a method for facilitating exchange of electronic messages between two parties, where the message can be sent only if the receiver of the message has signified that he or she is willing to receive any message from that sender. The functions of this invention were controlled by software running on the computers. The Examiner held that the invention was excluded by section 1(2)(c) of the UK Act, which disentitled a business method and a programme for a computer from patentability. Holding that the invention was a case of using known technology to solve a business problem, the Patent Office ruled that it was excluded from patentability as a method of doing business and a program for a computer as such.

10. 3 (l)“A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions” Following type of work comes under the domain of Copyright Act, 1957, hence not-patentable

11. 3 (m)“A mere scheme or rule or method of performing mental act or method of playing game”- Mere scheme or rule or method of performing mental acts or method of playing games, are not patentable because these simply comes from human mind

12. Traditional Knowledge– An invention that effectively duplicates or aggregates the known properties of a traditionally known component or components is defined in Section 3(p). Traditional knowledge is information that was previously available (in prior art). This wisdom has been passed down from generation to generation for a very long, ancient, and historical time.

Turmeric Case[6] – University of Mississippi had gotten a patent for “wound healing properties” of turmeric. CSIR, India challenged the grant of patent on the grounds that it was traditional knowledge of India. They were able to prove it with ancient texts and therefore, USPTO revoked the patent granted to them.

Neem Case – WR Grace and the Dept. of Agriculture, USA made a discovery of Antifungal property of neem. They developed a technology with neem-oil formulation to prevent the growth of fungi and they filed an application to obtain a patent over this technology. Indian opposed the grant of patent on the grounds that it is traditional knowledge; already known to India through ancient texts.

13. Inventions relating to atomic energy not patentable – Section 4: Section 4 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.” Section 4 of the 1970 Act prohibits the grant of a patent in respect of any invention relating to atomic energy falling within section 20(1) of the Atomic Energy Act, 1962

2.Novelty (Newness)

According to section 2(1)(1) a “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 patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art.  

Simply put, an invention is something that the inventor has himself devised and it could be a product or a process to produce a product. It must be the result of his steps to bring it about and one that did not exist before he commenced his work of invention. This is because, the inventions can be opposed later on the grounds of being prior anticipation or prior claims by someone else.

The invention must be new or something that was not known before or it can be a more developed version of something that is already known. Eg: When mouse was made for the first time, it was considered as an invention. But mouse in a different color is no “invention” as it is different only in its exterior design. However, if a person made wireless mouse, it would be considered an invention for it involves an “inventive step” or is more developed than the previous version.

In Bishwanath Prasad Radhe Shyam v. Hindustan Metal Industries: The SC held –“ In order to be patentable, an improvement on something known before or a combination of different matters already known, should be something more than mere workshop improvement, and must independently satisfy the test of invention or inventive step. It must produce a new result, or a new article or better or cheaper article than before. The new subject matter must involve “invention” over what is old. Mere collection of more than one, integers or things, not involving the exercise of any inventive faculty does not qualify for the grant of a patent. To decide whether an alleged invention involves novelty and an inventive step, certain broad criteria can be indicated. Firstly, if the “manner of manufacture patented, was publicly known, used or practiced in the before or at the date of patent, it will negate novelty or “subject matter”. Prior public knowledge of the alleged invention can be by word of mouth or by publication through books or other media. Secondly, of the alleged invention discovery must not be the obvious or natural suggestion of what was previously known.”

Mariappan v. AR Safiullah[7] – Manufacturing food grade paper in the shape of leaf is considered as an inventive step and therefore, the validity of the patent was upheld.

Turmeric Case[8] – A US-based University got a patent for a turmeric’s “wound healing properties”. Now, the fact of turmeric being used in India from the ancient times for its wound healing properties is considered traditional knowledge and this was challenged by CSIR on the ground of lack of novelty and inventive step. The USPTO revoked the patent granted to The University for lack of novelty and inventive step.

3. Non-obviousness

Under Section 2(ja) of the Patents Act provides “the characteristic of an invention that involves technological advancement or is of economic importance or both, as compared to existing knowledge, and invention not obvious to a person skilled in the art.” This means that the invention should not be obvious to a person ordinarily skilled in the same field where the invention is concerned. It should not be inventive and obvious for a person ordinarily skilled in the same field.

Eg: If a person has made a robot that can finish tasks on voice commands, anybody else in the field of robotics should not be able to make the same. This is non-obviousness. If the invention can be made by anyone else, it is not an “invention” within the meaning of the Act.

The Supreme Court in the Novartis v. UOI[9] case broke down Section 2(ja) into its elements in the following way: “It [The product] must come into being as a result of an invention which has a feature that:

(a) entails technical advance over existing knowledge; Or

(b) has an economic significance And

(c) makes the invention not obvious to a person skilled in the art”

Rado v. John Tye& Son Ltd.[10] – It is: “Whether the alleged discovery lies so much out of the track of what was known before as not naturally to suggest itself to a person thinking on the subject, it must not be the obvious or natural suggestion of what was previously known.

Graham v. John Deere Co[11]. – US SC has devised a test to find out the obviousness of an invention. There must be 3 checks –

1. The difference btw prior art and challenged claims
2. The level of ordinary skill in the field relating to the patent
3. Whether one possessing that level of skill would have deemed to be obvious from the prior art reference.

Pfizer Inc. v. Teva Pharmaceuticals USA, Inc.[12] – Pfizer had obtained a patent on it drug “Protonix”. Few years later, Teva & Sun Pharma got a patent on “Pantoprozole”, an essential ingredient of Protonix. They started selling generic version of Protonix and made huge profits.

Pfizer challenged the grant of patent on the ground of it being obvious. They were able to prove that Teva had done this before with another drug called Prilosec where the defendants patented omeprazole. The Court ruled in the favour of Pfizer and Teva and Sun Pharma were asked to huge sums of money as damages.

4.Utility/Industrial Application

Industrial applicability is defined in Section 2 (ac) of the Patents Act as “the invention is capable of being made or used in an industry”. This basically means that the Invention cannot exist in the abstract. It must be capable of being applied in any industry, which means that it must have practical utility in respect of patent.

Eg: You discovered a bacterium which excretes a certain chemical “X”. This alone cannot be patented. There must be some use of the invention in question.

Melia’s application: The person had applied patent for his business model to exchange prison sentence to corporal punishment. The application was refused for the lack of industrial applicability.

CONCLUSION

These are the most important factors to be kept in mind while applying for a patent. Applying for a patent without checking for Subject-matter patentability, novelty, utility and non-obviousness would only lead to waste of time and money. Plus, there is always a threat from others that the invention infringes their patent rights. It is always better to have a thorough check of prior art regarding the invention that it to be patented. Therefore, it is always advisable to conduct a pre-application search for prior claims and obviousness, to avoid opposition later.

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Written by- Aparna Gupta, University Law College & Dept. of Studies in Law

[1] Diamond v. Chakrabarty, 447 U.S. 303 (1980)

[2] Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013)

[3] Novartis AG v. UOI, 13 S.C.R. 148

[4] Monsanto Technology LLC v. Nuziveedu & Ors, AIR 2019 SC 559

[5] Diamond v. Chakrabarty, 447 U.S. 303 (1980)

[6] Case of the Turmeric Patent (1997, USPTO)

[7] 2008 (38) PTC 341 (Mad.)]

[8] Ibid, see footnote 6.

[9] Ibid, see footnote 3.

[10]  (1967) R.P.C. 297

[11] 383 U.S. 1 (1966)

[12] Civil No. 2:10cv128.