INTRODUCTION
A patent is a government-granted right that prevents others from using, making, or selling an invention for a specific period. Inventors can also patent their previous inventions to continue developing them. By granting inventors exclusive rights to their inventions, patent law aims to encourage them to contribute more in their fields. As used in modern parlance, a patent signifies the right granted to an inventor to invent a process, device, article of manufacture, or matter composition.
Patents grant the Patentee a limited-time exclusive right over an invention. When a patent is registered, the patentee acquires the exclusive right to control, manufacture, use, sell, or import patented products or processes. Registration of an invention will prevent anyone from using it without the permission of the patentee. The patentability of an invention, however, depends on several factors, such as whether or not the invention is innovative, or whether it involves an inventive step, or whether or not it can be used by industry, etc.
Patent laws in India have been consolidated through the enactment of the Patents Act, 1970[1] and the Patent Rules, 2003[2].
Application for Patent Registration is handled by the Patent Office, Controller General of Patents, Designs, and Trade Marks. The application for registering a patent may be filed electronically which shall be accompanied by a summary or complete specification. Inventions can be processes, works of art, manufacturing methods, software, chemicals, or drugs.
Regardless of whether a provisional or complete specification is included in the patent registration application, the patent registration process is not permanent, and it is valid for only 20 years from the filing date. Thereafter, it becomes public knowledge.
WHAT CAN BE PATENTED?
It is important to understand that the answer is not set in stone. It is not possible to list everything that can and cannot be patented. However, there are a few criteria/requirements that must be met before an invention can be patented. Patentability depends on whether the invention meets those criteria/requirements.
The terms invention and patent must be understood before delving into the criteria. According to the Patent Act, 1970 (“Act”), ‘invention’ is defined as under:
“invention” means a new product or process involving an inventive step and capable of industrial application.[3]
Therefore, such invention protected under the Patents Act, 1970 refers to ‘patented’.
Patents in India can be granted based on the following criteria/requirements:
1. PATENTABLE SUBJECT MATTER:
In deciding whether an invention can be patented, the most important factor to consider is whether it relates to the patentable subject matter. Patent claims must also fall into the category of patentable inventions in addition to the three statutory requirements. Every country has a different definition of a patentable invention.
It is not expressly specified by the European Patent Convention (EPC) or the Patent Act what inventions are patentable, but rather a negative definition is given. Instead of stating what types of inventions are eligible for patents, EPC and the Act define the categories of inventions not eligible for patents under Article 52 of the EPC and Section 3 of the Act. The Act specifies a non-exhaustive list of items that are not considered inventions to grant patents.
On April 1, 20003, in Novartis AG v. Union of India & Others[4], the Supreme Court of India upheld the Indian Patent Office’s rejection of a patent application filed by Novartis on the anticancer medication “Glivec.” Glivec, according to the Supreme Court, did not qualify as a patentable “invention” under Section 3 (d) of the Indian Patents Act.[5]
2. NOVELTY:
To reward the inventors, the Act stresses the standards for meeting patentability criteria. Among these criteria, novelty is an essential and absolute requirement for patentability. Novel inventions are those that are not in the public domain anywhere in the world and are evaluated using existing expertise in the relevant field of technology. As defined in Section 2(1)(l) and 2(1)(j) of the Patents Act, a new invention differs from an invention.
Anticipation is a term used to describe a lack of novelty, and it is determined by factors such as prior publication, public knowledge, commercialization, and selected inventions. Sections 29 to 34 of the Act specify what anticipation is not, despite the patent act not explicitly defining anticipation.
A claim is considered anticipated if prior art exists (i.e., if the prior art describes things that fall within the scope of an alleged claim), and the claimed invention can be performed by studying the prior art. If expert opinion is used to identify anticipation using relevant expertise, it may not be necessary to repeat the prior art test. The court stated the following in the case of Lallubhai Chakubhai Jariwala v Chimanlal Chunilal and Co.[6],:
“The two features necessary to the validity of a patent are novelty and utility, but the real test is the novelty of the invention. Novelty is essential, for otherwise there would be no benefit given to the public and consequently no consideration moving from the patentee [while interpreting the factor related to public knowledge and public use.]”
3. INVENTIVE STEP OR NON-OBVIOUSNESS:
‘Inventive step’ is defined under Section 2(1)(ja) of the Act.
Inventions, under the Act, are products or processes with an inventive element capable of industrial use. The only way a patent application can be patented is if it has novelty (newness), inventiveness, and the capability of being produced or used in industry. If the invention satisfies the novelty (or newness) requirement, which is a must, the next challenge is to demonstrate inventiveness.
4. INDUSTRIAL APPLICABILITY:
Capable of Industrial Application is defined under Section 2(1)(ac) of the Act.
To be patentable, an invention must be industrially applicable. Inventions are considered industrially applicable if they can be manufactured or used in a variety of industries. As a broad term, “industry” should include activities such as transportation, agriculture, hunting, public services, and medical services, in addition to what is traditionally referred to as “industry”.
The requirement of industrial applicability also means that inventions that are infeasible based on well-established natural laws, such as perpetual motion machines, cannot be patented.
WHAT CANNOT BE PATENTED?
In India, patentable innovations are novel and non-obvious with industrial applications. The Indian Patent Act defines “patent” as any patent granted under the Act. The Act provides only for non-patentable inventions, as defined in Chapter III. If a patent application meets any of the requirements set out in Sections 3 and 4 of the Act, it cannot be patented, regardless of whether it meets the novelty, utility, or non-obviousness tests. The following items are specifically listed in section 3 of the Act as not patentable in India:
· Inventions that are frivolous or that contradict well-established natural laws;
· The primary or intended use of the invention or commercial exploitation of such invention;
· The written expression/discovery of a scientific principle, the formulation of an abstract theory, or the discovery of living or non-living substances in nature.
· Discovery of a new form of a known substance not resulting in an improvement in that substance’s known efficacy;
· Discovery of any new property 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;
· The substance obtained by an admixture which results in aggregation of the properties of the components;
· Arrangement/re-arrangement/duplication of the known device;
· Method of agriculture/horticulture;
· Process for the medicinal, surgical, curative, prophylactic diagnostic, treatment of human beings;
· Plants and animals other than microorganisms;
· Mathematical or business method, a computer programme in its own right, or algorithms;
· Any aesthetic creation including literary, dramatic, musical work, artistic work, cinematographic works and television productions;
· Scheme of performing the mental act;
· Presentation of information;
· Topography of integrated circuits;
· Inventions that are of traditional knowledge; and
· An invention relating to atomic energy falling within the Atomic Energy Act, 1962[7].
CONCLUSION
It is worth mentioning that the development of new technology can be enhanced through the provision of patents. To identify when, where, and how patents should be applied, one needs an intelligent strategy that balances business interests with many choices. For example, in addition to achieving valuable savings, companies can improve their patent rights by focusing on international considerations and regulations.
The above-mentioned are the statutorily required criteria for patentability. Another important criterion for obtaining a patent is the disclosure of an enabling patent. To be enabled, a patent draft specification must sufficiently describe the invention to allow a person skilled in the same field as the invention to practice it without undue effort. It is almost certain that a patent will not be granted if there is no enabling patent disclosed in the patent specification.
[1] https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf
[2] http://www.ipindia.gov.in/writereaddata/Portal/IPORule/1_70_1_The-Patents-Rules-2003-Updated-till-23-June-2017.pdf
[3] Section 2(1)(j) of the Act.
[4] CIVIL APPEAL Nos. 2706-2716 OF 2013.
[5] https://unctad.org/ippcaselaw/sites/default/files/ippcaselaw/2020-12/Novartis%20AG%20v.%20Union%20of%20India%20%26%20Others%20Indian%20Supreme%20Court%202013_0.pdf
[6] (1935) 37 BOMLR 665.
[7] Section 4 of the Act.
YLCC would like to thank Nikunj Arora for his valuable insights in this article.
