CHAPTER 2 | PATENT - BACKGROUND AND BASIC PRINCIPLES

Patent is a grant of exclusive rights made by the Government on to an inventor,

or more commonly his employer, to work the invention to the exclusion of
others for a limited period of time (20 years). Patents are granted to industrially
applicable inventions. Patents may be granted for invention relating to a
product, process or an improvement thereof.

There is a quid pro quo between the Grantor of right and the grantee. That is the
patent right (exclusive rights in relation to invention) is granted on the
consideration that the inventor has made complete disclosure of the invention
to the Government.

Patent is statutory and a territorial right. Patent obtained in one country is not
enforceable in other country. The inventors or their assignees are required to
file separate patent application in different countries for obtaining the patent in
those countries.

At the expiration of the monopoly, the invention falls into the public domain
and may be utilized for the benefit of general public. In the sense that, other
people are free to utilize the technical knowledge related to the invention even
for making commercial gains. For example, ‘A’ has invented a technology
relating to mobile phone, then ‘A’ alone shall have the exclusive rights to
commercially exploit and authorize others to commercially use such patented
technology until the protection period. Once the protection period is over, the
said mobile technology would fall in to the public domain, and any interested
person may use the said mobile technology without authorization from the
inventor for even commercial exploitation and competing with the inventor in
the market.

The grant of patent is made by the Government after fulfilment of the essentials
for grant. The exclusive legal rights obtained by a patent grant are not absolute

22
and there are a number of checks and balances to prevent any form of abuse of
such monopoly.

The benefit of the patent system is that on one hand it encourages the inventor
as it offers an exclusive protection period, unlike the trade secret or confidential
information which is always prone to accidental disclosure or leak of
information. And on the other hand, the patent system ensures complete
disclosure of the invention to the Government, so that after the protection
period, the information related to the invention is available to any interested
person for further advancement of technology and or manufacture so that the
cost of that invented product or process becomes further economical.

This chapter is aimed at providing the basic information in relation to patent

for the ease of the reader, who would like to refer to the concept, definitions,
justifications, basic principles and essentials of patent. This chapter sets the
background and helps to understand the research in light of well known
concepts and defined principles of patent law that have been dealt herein below
in sufficient length.

Further, it is necessary to mention that since United Kingdom is a signatory to

the European Patent Convention, which was signed in Munich in 1973, there is
an influence of the European Patent Convention on the UK Patent Law, and
thus where appropriate references shall be made to the Convention and to
judgments of the boards of appeal of the European Patent Office in Munich.

2.1 LEGAL DEFINITION OF PATENT AND RELATED CONCEPTS IN INDIA,

UK AND US

2.1.1 India
Definition of Patent
The Indian Patents Act, 1970 as amended by the Indian Patents (Amendment)
Act, 2005 defines patent as “Patent means a patent for any invention granted

23
under this Act”10. Prior to 2002, Patent was defined as “Patent, under the Act, is
granted by Government to the inventors for a limited period of time, the
exclusive right to make, use, exercise and vend his invention.”

Thus analyzing the aforesaid definitions, it can be said that Patent is a

document, issued by Government, wherein it creates a legal situation in which
patented invention can normally only be exploited (made, used, sold, imported)
by patentee, or with the authorization of patentee.

Definition of Invention
As patent is granted for invention, it is pertinent to understand the meaning of
invention. Prior to the amendment of 2002, the old definition of “invention”
read as below:
‘Invention’ means any new and useful
art, process, method, or manner of manufacture,
Machine, apparatus or other article, and
Substance produced by manufacture and includes
any new and useful improvement of any of them, and an alleged invention
This definition is done away with and the new definition under Section 2 (1) (j)
of Patents Act, 1970 as amended by Amendment Act of 2002 defines ‘Invention’
to mean “a new product or process involving an inventive step and capable of
industrial application.”

In accordance with new definition of ‘invention’, a patent can be granted to any

New product or process
Involving an inventive step and
Capable of industrial application
The above points are further explained in the later section of the same chapter.

10
Section 2 (1) (m) of the Patents Act, 1970

24
Raj Prakash v. Mangat Ram Chowdhary11

While considering the meaning of ‘invention’ the Court held that “invention is
to find out or discover something not found or discovered by anyone before and
it is not necessary that the invention should be anything complicated and the
essential thing is that the inventor was the first one to adopt it and the principle
therefore is that every simple invention that is claimed, so long as it is
something novel or new, would be an invention and the claims and the
specifications have to be read in that light and a new invention may consist of a
new combination of all integers so as to produce a new or important result or
may consist of altogether new integers and the claims for anticipation by the
defendant has to be either by prior user or by prior publication”.

Improvements
The definition of invention includes within its scope any new and useful
improvement of any manufacture, article or substance whether patented or
otherwise. But the improvement in order to be patentable must independently
satisfy the test of invention. Where the improvement relates to a subsisting
patent in the favour of the same person, it can be patented as Patent of
Addition.12

2.1.2 United Kingdom

Patent
The UK Patents Act, 1977 defines Patent in Section 130 as “Patent means a
patent under this Act”.

Invention
The UK Patent law does not define the word ‘invention’.

A dictionary definition of ‘invention’ might talk in terms of an imaginative

design, or product or innovation or something produced for the first time.

11
AIR 1978 Del 1; MANU/DE/0152/1977
12
Narayanan P., Patent Law, Eastern Law House, Fourth Edn., 2006 Pg. 17

25
Schmookler gives a more rigorous definition and subdivides inventions into
process inventions and product inventions. The former are new ways of
producing something old and the latter are old ways of producing something
new. Every invention can thus be considered to be a ‘new combination of pre-
existing knowledge which satisfies some want. 13 In practice, the lack of
definition causes few problems because the basic requirements of novelty,
inventive step and industrial application, as defined in the statute and as
interpreted by the courts, in most cases produces an effective and practical
explanation of ‘invention’ for the purposes of patent law.14

Meaning of Patentable inventions

Part I of the UK Patent Act, 1977 deals with Patentability and Section 1 of the
Act, gives the meaning of ‘Patentable inventions’ and declares a few things that
are not patentable under the Act.

For the first time in Patent Act, 1977, the meaning of a ‘patentable invention’
was codified. Previous legislations up to and including 1949 Act had merely
stipulated that a patent may be granted only for a manner of new
manufacture.15

In UK, a patent may be granted only for an invention in respect of which the
following conditions are satisfied, that is to say -
(a) the invention is new;
(b) it involves an inventive step;
(c) it is capable of industrial application;
(d) grant of a patent for it is not excluded by subsections (2) and (3) of Section 1
or section 4A.16

13
Schmookler, J. (1986) Invention and Economic Growth, Harvard University Press, Chapter 1.
14
Bainbridge, David. Intellectual Property, 6th Edition. Pearson Longsman (2006) Pg 339
15
Manual of Patent Practice, 2012 retrieved at http://www.ipo.gov.uk/practice-sec-001.pdf visited on
23/04/12 at 2.40 p.m.
16
See Section 1 (1) of UK Patent Act, 1977

26
Although the definition of invention under the UK Patent Act does not include
improvements expressly, improvements have been recognized as patentable
inventions.17

In Kynock & Coy v. Webb,18 Lord Halsbury, L.C. observed:

“It is true that any machine protected by a patent is susceptible of
improvements, and such improvements, if in other respects conforming
to Patent Law, may be protected themselves, but they can only be made
use of by the licence of the proprietor who is in command of the master
patent.”

Following are other interpretations given under Section 130 of UK Patent Act,
1977:
“Patented invention” means an invention for which a patent is granted
and “Patented process” shall be construed accordingly.
“Patented product” means a product which is a patented invention or, in
relation to a patented process, a product obtained directly by means of
the process or to which the process has been applied.

2.1.3United States
Patent
A patent is an intellectual property right granted by the Government of the
United States of America to an inventor “to exclude others from making, using,
offering for sale, or selling the invention throughout United States or importing
the invention into the United States” for a limited time in exchange for public
disclosure of the invention when the patent is granted.19

There are three types of patents. ‘Utility patents’ may be granted to anyone who
invents or discovers any new and useful process, machine, article of

17
Narayanan P., Patent Law, Eastern Law House, Fourth Edn., 2006 Pg. 17
18
(1900) 17 RPC 100 at 107
19
http://www.uspto.gov/patents/index.jsp visited on 9th April 2012, at 6.40 p.m.

27
manufacture, or composition of matter, or any new and useful improvements
thereof. ‘Design patent’ may be granted to anyone who invents a new, original,
and ornamental design for an article of manufacture. ‘Plant patents’ may be
granted to anyone who invents or discovers and asexually reproduces any
distinct and new variety of plant.20

The present research is concerned only with utility patents, as the comparison
of the subject matter of patent of various countries is in relation with utility
patents. Thus the chapter hereinafter only makes references to utility patents.

Invention
In United States, invention is defined to mean invention or discovery.21

Inventions Patentable
Patent may be obtained by the one who invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, subject to other conditions and requirements
under the US law.22

Essential conditions of patentability in US are novelty23, non-obvious subject

matter24 and that the invention must be useful25 which are discussed in detail in
the later part of the chapter.

2.2 JUSTIFICATIONS FOR PATENT

In the course of time, both “individual” and “public” justifications have played
prominent roles in the arguments in favour of patents for invention, as for other

20
Ibid.
21
See Section 100 (a) of Title 35 of United States Code
22
See Section 101 of Title 35 of USC.
23
See Section 102 of Title 35 of USC
24
See Section 103 of Title 35 of USC
25
The criterion of usefulness can be gathered from Article 1, Section 8 Clause 8 of the US Constitution
itself which provides that patent protection is available for “useful arts”, and Section 101 of 35 of USC
in defining what is patentable, states that patents are available for useful processes, machines,
manufactures, and compositions of matter.

28
kinds of intellectual property. At various periods the idea of patent as an
instrument of justice to the inventor has proved attractive, and the power of
this sort of argument is by no means exhausted. For, instance the introduction
of compensation for employee-inventors reflects this attitude.26

An inventor owns a property right in his invention. This is a natural right and
accords with the views on property rights of philosophers such as Locke.
Furthermore, there is no substantial principle of classic jurisprudence that
requires that property rights be limited temporarily.27

If the inventors and his successors in title choose to keep secret the details of
the invention or how it works, they may do so. However, such a property right,
protected only by the law of confidence, is very vulnerable. Details of the
invention might be disclosed in breach of confidence and eventually there may
be those who, having acquired the details in good faith unaware of their
confidential nature, are free in law and equity to put the invention to work.28

Alternatively, the patent system guarantees a limited term of protection in

return for the inventor’s agreement to disclose details of his invention and later
after the term of protection abandon his property right in it. This is in line with
the contract view of patents, as shown in the Table given below. Inventors are
offered a stronger and more effective property right than under their natural
right on condition that they will lose all rights in the invention when patent
expires.

26
Cornish W, Llewellyn D. & Aplin T, Intellectual Property: Patents, Copyright, Trademarks & Allied
Rights, Sweet & Maxwell, 7th Edn., (2010) Pg 143
27
Bainbridge, David. Intellectual Property, 6th Edition. Pearson Longsman (2006) Pg 313
28
Ibid

29
Table: Patent Consideration (Patent – Concept of Contract – consideration)29

Patentee’s Consideration State’s Consideration

1. Details available for public 1. Examination and search by

inspection Patent Office may assist in the
2. Invention falls into the public drawing up or amendment of the
domain on expiry application
3. Some things can be done during 2. Wealth of information available
the life of the patent (non- at Patent Office will help in the
infringing acts) by others framing of application
4. The invention may be vulnerable 3. The granting of a limited
to a compulsory licence monopoly
5. Competition law may impose 4. A priority date will be given
restrictions on the exploration of assisting in applications in other
the patent countries
6. Fees have to be paid 5. Useful evidential materials
7. The risk that the invention may available, presumptions.
be appropriated by the
Crown/Govt. (although payment
may be made)

The conventional justification for a patent system is that inventors and

investors are rewarded for their time, work and risk of capital by the grant of a
limited, though strong, monopoly. This benefits the society by stimulating
investment and employment and because details of the invention are added to
the store of available knowledge. Eventually, after a period of time, depending
on how long the patent is renewed and subject to a maximum of 20 years,
anyone will be free to put the invention to use. This utilitarian approach found
favour with great English philosophers such as Jeremy Bentham, who argued
that, because an invention involved a great deal of time, money and effort and

29
Ibid Pg 310

30
also included a large element of risk, the exclusive use of the invention must be
reserved for a period of time so that it could be exploited and thereafter used
for the general increase of knowledge and wealth.30

Proprietor of a patent is likely to use this economic privilege to his advantage

and the resulting product will be priced accordingly, subject to market forces.
The mere fact that competition can be restrained by way of injunction will tend
to maintain prices. However, that does not indicate that patents are against the
public interest. Indeed, it is in the public interest that patent monopolies are
enforced.31

The proprietor may demand a high price due to following factors:

Cost of research and development
marketing effort required to establish a demand for the product or
process
Natural commercial desire to obtain large profits
Reinvest the profits in further research and development

However, the owner of the patent does not have carte blanche in fixing his
prices for the following reasons:
1. Consumers have managed thus far without the invention and may
continue to do so by refusing to pay higher prices;
2. The equation between volume of sales and profit margin must be
considered. Sometimes a cheaper price will make more money for the
owner of the patent by increasing sales disproportionately;
3. The consuming public may not have a need for the invention and it may
be difficult to attract sales at any price. The sad fact is that a great many
inventions fail to be commercially viable; and

30
Ibid Pg 313
31
Per Aldous J in Chiron Corporation v. Organon Teknika Ltd. (No.10) (1995) FSR 325 at 333

31
 4. There are various safeguards and controls to prevent abuse of patents in
the patent law.32

A patent, therefore, is not necessarily a licence to print money, and a great deal
of market research and economic judgment is essential before embarking upon
the development of inventions. The advent of technology and its increasing
complexity have necessitated substantial capital investment in development of
inventions. For example in the Pharmaceutical industry the cost of developing
and testing new drugs requires large and long term investment well before
rewards can be secured.

Convincing arguments in favour of patent system:

1. The contract theory: Temporary protection granted in reward for
knowledge of new inventions
2. The reward theory: Inventors should be rewarded for making useful
inventions and the law must be used to guarantee this reward so that
inventors can receive sufficient recompense for their ingenuity.
3. The incentive theory: By constructing a framework whereby invention is
rewarded, this will act as an incentive to make new inventions and to
invest the necessary time and capital. This is a forward looking approach
contrasted to the latter which is retrospective.
4. Natural Law/Moral Rights Theory: Individuals have a right to property in
their own ideas and this right should be protected from being usurped or
stolen by others.

Chiron Corporation v. Organon Teknika Ltd.33

In above case, Aldous J, put the justification for the patent system in very
pragmatic terms, saying that nearly every country had chosen to adopt a patent
system because:

32
See Bainbridge, David. Intellectual Property, 6th Edition. Pearson Longsman (2006) Pg 314
33
(1995) FSR 325

32
 “…it is generally accepted that the opportunity of acquiring monopoly
rights in an invention stimulates technical progress in at least four ways. First it
encourages research and invention; secondly, it induces an inventor to disclose
his discoveries instead of keeping them a secret; thirdly, it offers a reward for the
expense of developing inventions to the state at which they are commercially
practical and, fourthly, it provides an inducement to invest capital in new lines of
production which might not appear profitable if many competing producers
embarked on them simultaneously…It is inherent in any patent system that a
patentee will acquire a monopoly giving him a right to restrict competition and
also enabling him to put up or at least maintain prices. That affects the public
and is contrary to the public interest, but it is the recognised price that has been
accepted to be necessary to secure the advantages to which I have referred.”

The three main factors underlying the patent system are encouragement,
inducement and reward. The public interest, although apparently jeopardized
by the grant of monopoly, is secured by increased industrial activity, developing
new technologies and disclosure of new and useful inventions. Furthermore,
patent law contains a number of safeguards, such as compulsory licensing and
Government Use, to curb any significant abuse of patent monopoly.

2.2.1 Objectives of patent law

Patent law promotes inventiveness and ensures adequate returns to
investments made.
Patent system is required to encourage Research and Development of
new technology and industry.
It is important for technological, industrial and economic development
of a country.
Patent is granted to patentee for conferring a monopoly right to the
inventor for a limited period – to own, use or sell his invention.
Providing of exclusive rights to an inventor in turn stimulates technical
progress, industrial growth and improves quality of life of people.

33
 On expiration of protection period the invention can be used by other
people for their own and public benefit.

Bishwanath Prasad Radhey Shyam v/s Hindustan Metal Industries34

Sarkaria, J. of the Supreme Court stated that “the object of patent law is to
encourage scientific research, new technology and industrial progress. Grant of
exclusive privilege to own, use or sell the method or the product patented for a
limited period, stimulates new inventions of commercial utility. The price of the
grant of the monopoly is the disclosure of the invention at the patent office,
which after expiry of the fixed period of the monopoly, passes into the public
domain”.

2.3 BASIC PRINCIPLES AND ESSENTIALS OF PATENT – INDIA, UK AND US

A patent will be granted for an invention if it satisfies the required legal
conditions. Legal Conditions can mean substantive criteria (novelty, non
obviousness, utility and patentable subject matter) or formal criteria (disclosure
and other procedural requirements under patent law). Usually Patentability
refers to the substantive conditions such as novelty, non obviousness and
utility, and does not refer to the formal conditions such as sufficiency of
disclosure, unity of invention or the best mode requirement.
The substantive criteria for patentability of an invention are:
1. Novelty - That the invention must be novel or new as compared to the
state of the art existing before the priority date (first claim made for the
invention by filing for a patent in a country)
2. Non-obvious – That the invention must be non –obvious (terminology
used in US patent law) or involve an inventive step (terminology used in
TRIPS Agreement, European Patent Law). The non-obvious criterion
means that the invention must not be obvious to a person skilled in the
art to which invention relates.

34
(1979) 2 SCC 511 at 517

34
 3. Usefulness or Utility - That the invention must be useful (terminology
used in US) or capable of industrial application (terminology used in
TRIPS Agreement, European Patent Law, Indian Patent Law)
4. Patentable Subject Matter - That the invention should be of
patentable subject matter that is the kind of subject matter that is
eligible for patent protection under the patent laws of a country

The above mentioned first three criteria that is Novelty, non-obviousness and
utility are discussed below at length as understood in the jurisdictions of India,
United Kingdom and United States. The fourth criteria, that is, ‘Patentable
Subject Matter’ is discussed in detail in the next chapter of the research thesis.

2.3.1 India
The basic criteria or essentials for grant of patent in India are that the invention
(product or Process) must be novel, involve an inventive step, be capable of
industrial application, not fall within the scope of section 3 and section 4 and
fulfill other procedural requirements laid down under the Patent Act, 1970.

2.3.1.1 Concept of New product or process

In the Patents Act, 1970 we do not find the definition of expression “new
product or process”. However, the definition of “new invention” stated under
Section 2 (1) (l) casts some light over the concept of newness or criteria of
novelty of product or process. The expression “new invention” as defined in
Section 2 (1) (l) 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”.

Examples of product invention

Typewriter, sewing machine, mobile phone, helicopter, sulfa drugs are few of
the examples which can be called as product invention

35
Examples of process invention
Process for chrome plating, the process of making synthetic diamonds,
processes for vulcanizing rubber, smelting ore, tanning and dyeing.

For an invention, whether product or process, to be patented the first essential

criteria is that it has to be new, that is satisfying the feature of novelty. The
invention will be considered to satisfy ‘novelty’ if it is not anticipated by prior
knowledge in public domain either by way of prior publication anywhere in the
world or by prior use in India or by prior claim in India on the date of filing of
patent application or priority date.

Newness depends upon the State of prior art, that is existing knowledge and
similar invention already known in the particular technology field. Thus there
would be no novelty in an invention if there is prior publication or prior use of
an identical invention.

Novelty is always ascertained in the light of a single prior art reference and
various prior art references cannot be combined. In order to negate novelty of
an invention, all elements of an invention must be present in the prior art
reference. For example, if a publication provides details of a chair made of wood
and if a person 'A' files for a patent over an invention comprising of a wooden
chair with wheels, the invention would be novel in the light of the prior art
reference. Because, all the elements of the invention are not present in the
publication. 35

Although the term ‘state of the art’ has not been defined under the Patents Act,
the following general principles are applied by the Patent Office to determine

35
Kankanala Kalyan C., Narasani Arun K. and Radhakrishnan Vinita, Indian Patent Law & Practice,
Oxford University Press, 2010, Pg. 25

36
the novelty of an invention during the examination procedure by applying
provisions of section 13, read with the provisions of sections 29 to 34 :
An invention is not considered to be novel -
(a) If it has been anticipated by publication before the date of filing of the
application in any of the specifications filed in pursuance of application
for patent in India on or after 1st January, 1912.
(b) if it has been anticipated by publication made before the date of filing or
the date of priority of the application in any of the documents in any
country; or
(c) If it has been claimed in any claim of any other complete specification
filed in India, which was filed before the date of application though
published after the date of that application.36

The Indian Patent Act provides a list of non-exhaustive circumstances37 that

will anticipate an invention and negate its novelty. Some of such circumstances
are:
• Prior Publication – An invention will not be considered novel if it is
anticipated by a publication of the patent application of the invention.38
In the case of Farbewerke Hoechst Aktiengesellschaft Vormals Meister
Lucius & Bruning a Corporation v. Unichem Laboratories and Ors. 39 it
was observed that a prior publication will anticipate an invention only if
it contains the whole of the invention impugned, that is, all the features
of the invention.
• Public Knowledge and Public Use – Public knowledge about the
invention or Public Use of an invention before the filing date of the
patent application will anticipate the invention and negate its novelty.40

36
Draft Manual of Patent Practice and Procedure, 2008, Pg. 22, referred from
http://ipindia.nic.in/ipr/patent/patents.htm visited on 9th April 2012.
37
See Sections 13, 29, 30, 31, 32, 33 and 34 of the Indian Patent Act, 1970.
38
For details see Section 13 and Chapter VI ‘Anticipation’ of the Indian Patent Act, 1970.
39
MANU/MH/0064/1969
40
Kankanala Kalyan C., Narasani Arun K. and Radhakrishnan Vinita, Indian Patent Law & Practice,
Oxford University Press, 2010, Pg. 26

37
 • On Sale – An invention will not be novel if it is on sale or commercially
worked in India by the applicant or any person authorized by him before
the date of application. However, if the invention was on reasonable
trial, it will not be anticipated.41
• Public Display – Public display of an invention before the filing date of
the patent application will anticipate the invention. However, it will be
considered that there is no anticipation by Public display, if in the
preceding twelve month from the date of application, the display or
publication of details of the invention is made at an exhibition notified
by Central Government in the official gazette.42
• Traditional knowledge – Any invention that forms part of traditional
knowledge would not be novel. An invention will be anticipated, if it
forms part of traditional knowledge of any indigenous community of
India or anywhere in the world.43

The Turmeric Case

Two US based Indians Suman K Das and Hari Har P. Cohly were granted a US
Patent 5,40,504 on March 28, 1995 on “Use of Turmeric in wound healing”. The
patent was assigned to University of Mississippi Medical Centre, USA. This
patent claimed the administration of an effective amount of turmeric through
local and oral route to enhance the wound healing process, as a novel finding.
Any patent, before it is granted has to fulfill the basic requirements of novelty,
non-obviousness and utility. Thus, if the claims have been covered by relevant
published art, then the patent becomes invalid. Council of Scientific and
Industrial Research (CSIR) challenged this patent and filed a formal request for
re-examination at USPTO on 28th October 1996. CSIR could locate 32 references
(some of them being more than one hundred years old and in Sanskrit, Urdu
and Hindi), which showed that this finding was well known in India prior to
filing of this patent. During the re-examination all the claims of the patent were

41
Ibid Pg. 27
42
Section 31 of Indian Patent Act, 1970
43
Section 25 (1) (k) of Indian Patent Act, 1970

38
rejected by USPTO. Thus the turmeric patent was revoked and CSIR were
successful in challenging the patent based on traditional knowledge on ground
of Novelty.44

Monsanto company v. Coramandal Indag Products (P) Ltd.45

In this case, it was held that the invention was publicly known since its formula
was published in the report of the International Rice Research Institute in the
year 1968 and its common name Butachlor was published in the same report in
the year 1969.

2.3.1.2 Invention must involve an inventive step

The term ‘inventive step’ means 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.46

This criterion is also commonly known as the non-obviousness criteria.

However, the present Patent Act has named this criterion as provided in the
TRIPS Agreement. 47

As per the section, an invention will have inventive step only if it satisfies two
conditions:
(i) The invention should be technically advanced in the light of prior art
or should have economic significance; and
(ii) The invention must be not obvious to a person skilled in the art

44
Article by Dr. Mashelkar R. A., Intellectual Property Rights And The Third World, retrieved from
http://www.csir.res.in/External/Heads/aboutcsir/leaders/DG/dgspeech5.htm on 8th April 2012.
45
(1986) 1 SCC 642; 1986 PTC 195 SC
46
Section 2 (1) (ja) of the Patent Act, 1970 as amended by the Patents (Amendment) Act, 2005, w.e.f.
1-1-2005. Prior to 2005, inventive step was defined to mean a feature that makes the invention not
obvious to a person skilled in the art.
47
See Article 27 of TRIPS Agreement.

39
The expressions ‘technically advanced’ or ‘economic significance’ are not
explained anywhere in the Act, however, a lot is explained in the Draft Manual
of Patent Practice and Procedure, 200848 of the Indian Patent Office.

In Canadian General Electric Co. Ltd. v. Fada Radio Ltd.49, the Court observed
that an invention which consists of a small inventive step but having regard to
the conditions of the art, constitute a step forward, be good subject matter for a
patent.

In Gillette Industries Ltd. v. Yeshwant Bros. 50 , the Court held that mere
simplicity was not necessarily an objection to the subject matter of an
invention, though matters of ordinary skilled designing or mere workshop
improvements were not inventions.

In simple words, when the invention is just an obvious extension of prior art,
the invention lacks inventive step.

M/s. Bishwanath Prasad Radhey Shyam v. M/s. Hindustan Metal Industries,51

In this case, the Supreme Court laid down the following criteria for assessing
inventive step.
“It is important that in order to be patentable an improvement on
something known before or a combination of different matters already
known, should be something more than a mere workshop improvement;
and must independently satisfy the test of invention or an ‘inventive
step’. To be patentable the improvement or the combination must
produce a new result, or a new article or a better or cheaper article than
before. The combination of old known integers may be so combined that
by their working interrelation they produce a new process or improved

48
Document referred from http://ipindia.nic.in/ipr/patent/patents.htm visited on 9th April 2012
49
AIR 1930 PC I; (1930) 47 RPC 69(PC)
50
AIR 1938 Bom. 347
51
MANU/SC/0255/1978

40
 result. 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.”

The term "obvious" means that the invention does not go beyond the normal
progress of technology but merely follows plainly or logically from the prior art,
i.e. something which does not involve the exercise of any skill or ability beyond
that to be expected of the person skilled in the art. For this purpose a person
skilled in the art is presumed to be an ordinary practitioner aware of what was
general common knowledge in the relevant art at the relevant date. In some
cases the person skilled in the art may be thought of as a group or team of
persons rather than as a single person.52

Inventive step is the toughest and ambiguous patentability requirement.53

2.3.1.3 Invention must be Capable of industrial application

Capable of industrial application, in relation to an invention, means that the
invention is capable of being made or used in an industry.54

Ordinarily, "Industry" is taken in its broad sense as including any useful and
practical, as distinct from intellectual or aesthetic activity. It does not
necessarily imply the use of a machine or the manufacture of a product and
covers such thing as a process for dispersing fog or a process of converting
energy from one form to another.55

An invention would satisfy the requirement of ‘capable of industrial application’

if it can be made a number of times, and can be used for at least one purpose in

52
Draft Manual of Patent Practice and Procedure, 2008, Pg. 35, referred from
http://ipindia.nic.in/ipr/patent/patents.htm visited on 9th April 2012.
53
Kankanala Kalyan C., Narasani Arun K. and Radhakrishnan Vinita, Indian Patent Law & Practice,
Oxford University Press, 2010, Pg. 32
54
See Section 2 (1) (ac) of the Indian Patent Act, 1970 as amended by 2005 amendment Act.
55
Draft Manual of Patent Practice and Procedure, 2008, Pg. 51, referred from
http://ipindia.nic.in/ipr/patent/patents.htm visited on 9th April 2012.

41
any industry. For example, a pen, which can be replicated, would be industrially
applicable because it can be used in the education industry. The pen would not
be industrially applicable if the same pen cannot be manufactured repeatedly.

2.3.1.4 Invention must not fall within the scope of Section 3 and Section 4
The Indian Patent Act, 1970 in its Chapter II titled “Inventions not Patentable”
in one part56 lists out items those are not inventions within the meaning of Act
and in the other part57 states that no patent shall be granted in respect of an
invention relating to atomic energy. These parts which are dealt in Sections 3
and 4 are discussed in detail in the next chapter of the present research.

2.3.1.5 Other Procedural requirements

To obtain a patent for an invention in India, one has to file an application58
along with specification59 and other necessary documents60 and relevant fees.
The application for grant of Patent has to then go through the various stages
such as publication, examination, pre-grant opposition and grant of patent.61
The applicant is expected to participate at various stages, for example, if the
applicant wishes to speed up the stage of publication then he has to file a
request for early publication. Similarly, the applicant has to file a request for
examination, after publication, if he wishes to take forward the process of grant
of patent.

56
Section 3 of the Patent Act, 1970 titled “What are not invention”.
57
Section 4 of the Patent Act, 1970 titled “Inventions relating to atomic energy not patentable”
58
Application must be filed in Form No. 1 which is given in Second Schedule to the Patent Rules,
2003.
59
Specification is a techno-legal document which describes and gives details of the invention, which is
a necessary requirement for obtaining a patent. This requirement is also known as the disclosure
requirement which forms the basis of grant of patent by the Government. Specification has to be filed in
Form No. 2 given in Second Schedule to the Patent Rules, 2003. The specification must comply with
the requirements of Section 10 of the Patent Act, 1970 and Rule 13 of the Patent Rules, 2003. See
Annexure for reference of Section10 and rule 13.
60
Form 3(Statement and undertaking regarding foreign filing), Form 5 (Declaration as to inventorship)
and Form 26 (Authorization of the patent agent, if the application is filed through a patent agent)
61
For more details and general understanding of the procedure please retrieve and read the official
publication of the Indian Patent Office titled “General Information For Filing Patent Application In
India” from the website address www.ipindia.nic.in/ipr/patent/patents.htm

42
Here the researcher restricts herself from dwelling into the details of the
procedural aspects of grant of patent, as they pertain to formal conditions of
obtaining a patent, which are outside the scope of research.

2.3.2 United Kingdom

As mentioned earlier, in the United Kingdom, a patent may be granted only for
an invention in respect of which the following conditions are satisfied, that is to
say -
(a) The invention is new;
(b) It involves an inventive step;
(c) It is capable of industrial application;
(d) Grant of a patent for it is not excluded by subsections (2) and (3) or section
4A.

2.3.2.1 Novelty
Section 2 (1) of the UK Patents Act, 1977 states that an invention shall be taken
to be new if it does not form part of the state of the art.

The state of the art in the case of an invention is taken to comprise all matter
(whether a product, a process, information about either, or anything else)
which has at any time before the priority date of that invention been made
available to the public (whether in UK or elsewhere) by written or oral
description, by use or in any other way. The state of the art includes matter
contained in other patent applications having an earlier priority date. 62

Therefore, novelty is really a question of whether the invention has been

‘anticipated’, for example by a previous patent, or by publication or by use.
Oral disclosures will not anticipate a patent if they are made in confidence,
whether express or implied.63

62
See Section 2 (2) and (3) of UK Patent Act, 1977.
63
Bainbridge, David. Intellectual Property, 6th Edition. Pearson Longsman (2006) Pg 340

43
In Windsurfing International Inc v. Tabur Marine (Great Britain) Ltd64., the
Court of Appeal held that a 12-year old boy, who built a sailboard and used it in
public for a few weekends at a caravan site at Hayland Island in Hampshire, had
effectively anticipated a later patent for a sailboard which was declared invalid
for want of novelty (and also because it lacked an inventive step)

Anticipation is judged by considering how a prior publication, for example,

would be construed by a person skilled in the art. This extension of the
reasonable man test is essential as many technical publications are
incomprehensible to the layperson. It is acknowledged that if the art is in highly
developed technology, it might be a matter of how it can be construed by a
team of persons skilled in the particular art.65 This was accepted in General Tire
& Rubber Co. v. Firestone Tyre & Rubber Co. Ltd.66 The court in this case stated
that “If the prior inventor’s publication contains a clear description of, or clear
instructions to do or make, something that would infringe the patentee’s claim
if carried out after the grant of the patentee’s patent, the patentee’s claim will
have been shown to lack the necessary novelty, that is to say, it will have been
anticipated. If, on the other hand, the prior publication contains a direction
which is capable of being carried out in a manner which would infringe the
patentee’s claim, but would be at least as likely to be carried out in a way that
would not do so, the patentee’s claim will not have been anticipated, although it
may fail on the ground of obviousness. To anticipate the patentee’s claim the
prior publication must contain clear and unmistakable directions to do what
the patentee claims to have invented. A signpost however clear, upon the road
to the patentee’s invention will not suffice. The prior inventor must be clearly
shown to have planted his flag at the precise destination before the patentee.67
Thus in this case, the ‘clear and unmistakable directions’ rule was laid down

64
[1985] RPC 59
65
Bainbridge, David. Intellectual Property, 6th Edition. Pearson Longsman (2006) Pg 345
66
[1972] RPC 457
67
Ibid at Pg 485

44
which has been used on numerous occasions.68 The test is also known as the
‘planting the flag’.

Horne Engineering Co. Ltd. V. Reliance Water Controls Ltd.69

As per Pumfrey J., “to anticipate the claim, the prior publication must contain a
clear and unmistakable direction to do what the patentee claimed to have
invented. The same test that applies to infringement also applies to
anticipation. That is, does the prior art fall within the claims of the patent in
suit.”

Novelty involves a factual investigation. Novelty is hit even if there has been use
of such invention before the priority date. It is not open to an inventor of a
secret product or process first to use it until it becomes a success and then to
patent it at the most advantageous moment. If he can do so, the patent system
suffers as an incentive to early revelation in the very case where it ought to have
greatest effect.70

Matter that has been obtained unlawfully or in breach of confidence, or which

has been divulged in breach of confidence is to be disregarded when
considering the novelty of an invention.71 In the case of patent application, this
covers the period of six months preceding the date of filing of the patent so
that, effectively if there has been a disclosure of the invention because of breach
of confidence, for example, by a potential manufacturer of products made in
accordance with the invention who has been in negotiations with the inventor,
there is a six-month time limit during which that disclosure will be ignored in
the determination of novelty. Further, Section 2 (4) (c) of the UK Patent Act,
1977 and related rules in the UK Patent Rules 200772 provide for the inventor to

68
See Bainbridge, David. Intellectual Property, 6th Edition. Pearson Longsman (2006) Pg 346
69
[2000] FSR 90 at 109
70
See Cornish W, Llewellyn D. & Aplin T, Intellectual Property: Patents, Copyright, Trademarks &
Allied Rights, Sweet & Maxwell (2010), Pg. 193
71
See Section 2 (4) of UK Patent Act, 1977
72
Rule 5 and 67 of Patent Rules 2007

45
display the invention at an international exhibition without this destroying the
novelty of the invention, subject to the inventor making declaration and filing
written evidence in the required form within a period of four months from the
date of application for patent. However, the patent application must be filed
within six months of the act of displaying the invention at the exhibition.

One thing an inventor must be careful to avoid is anticipating his own

invention, for example, by publishing details of it in an academic or trade
journal before the priority date (normally the date of filing the application).
However, to anticipate the invention, the publication must clearly describe the
invention as claimed.73 Tempting as it might be to publicise his ingenuity, the
inventor would be advised to restrain his ego and keep the details of his
invention secret, and in any dealings with advisers, potential manufacturers,
assignees or licensees, to make it clear that discussion of the invention is in the
strictest confidence.74 The inventor may also choose to sign non-disclosure
agreements for the purpose of maintaining confidentiality.

In most of the cases the assessment of novelty is straight forward, however the
patent office during examination for grant of patent or the judges who have to
decide the validity of patent based on novelty may face a few problems75 such as
i. in the case of Van der Lely v. Bamford76,
ii. in the case of Fomento v. Mentmore77

73
Lux Traffic Controls Ltd. V. Pike Signals Ltd. [1993] RPC 107. In that case a published paper did not
describe the invention sufficiently clearly so as to make it known to the public.
74
Bainbridge, David. Intellectual Property, 6th Edition. Pearson Longsman (2006) Pg 347
75
See Cornish W, Llewellyn D. & Aplin T, Intellectual Property: Patents, Copyright, Trademarks &
Allied Rights, Sweet & Maxwell (2010), Pg. 191 and 192
76
(1963) R.P.C. 61 HL. The Patentee claimed a hay raking machine in which the rake wheels were
turned not by an engine but by contact with the ground. The patent was held to have been anticipated by
a photograph in a journal which showed a hay rake with this feature. (The issue was whether the
photograph was clear enough to reveal the invention to a person skilled in the art. It was found to do
so).
77
(1956) R.P. C. 87 CA. The patentee claimed a ball point pen in which the housing around the ball
had a groove running in a ring below the equatorial plane of the ball; this produced a smooth flow of
ink. One alleged anticipation (a patent specification in which at least one plaintiff had interest) was
found to describe a method of enclosing the housing around the ball by “peining”, that is by hitting the
open housing with a tool shaped like a candle-snuffer. Before there could be anticipation, however, it
was necessary to show that the peining would inevitably produce the desired ring like groove in the

46
2.3.2.2 Inventive Step
The invention must involve an inventive step. ‘Inventive step’ means that the
invention must not be obvious to a person skilled in the art, having regard to
any matter which forms part of the state of the art by virtue only of Section 2(2)
and disregarding Section 2(3) of the UK Patent Act, 1977.78

The person skilled in the art is simply someone with a wide knowledge of
technology within which the invention lies (or a team of persons so skilled).
The question becomes, would the invention be obvious to such a person or
persons?

In the case of Windsurfing International Inc. v. Tabur Marine (Great Britain)

Ltd,79 the Court of Appeal held that the question of obviousness “has to be
answered, not by looking with the benefit of hindsight at what is known now
and what was known at the priority date and asking whether the former flows
naturally and obviously from the latter, but by hypothesizing what would have
been obvious at the priority date to a person skilled in the art to which the
patent in suit relates”. The Court of Appeal (Oliver, L.J.) identified four steps
which should be taken in answering the question of obviousness. They are:
(i) To identify “the inventive concept” in the specification
(ii) To assume the mantle of the normally skilled but unimaginative
addressee in the state of the art, who has the common general
knowledge of the art in question, as at the priority date.
(iii) To identify the differences (if any) between
(a) the matter cited as being “known or used” at the priority date; and
(b) the alleged invention

correct position; and the earlier document, it was held only gave instructions that “might well” produce
this effect.
78
See Section 3 of UK Patent Act, 1977
79
[1985] RPC 59 (CA)

47
 (iv) To ask, whether viewed without any knowledge of the alleged invention,
those differences constitute steps which would have been obvious to the
skilled man or whether they require any degree of invention.80

In Beloit Technologies v. Valmet Paper81, Jaocob J. formulated the approach of

Windsurfing case (supra) in a different form as follows:
1) What is the inventive step said to be involved in the patent in suit?
2) What was, at the priority date, the state of the art (as statutorily defined)
relevant to the step?
3) In what respects the step goes beyond, or differs from, that state of the
art?
4) Having regard to such development or difference, would the taking of
the step be obvious to the skilled man?
The question of obviousness is ultimately for the court, but, where expert
evidence has been given on the issue, the court should normally give
considerable weight to it.82

Pfizer’s Ltd’s Patent Case83

In this case, the patent related to the drug Viagra used to treat impotence in
men. Judge Laddie held it lacked inventive step, inter alia, on the ground that it
was obvious to attempt to administer known inhibitors used to treat male
impotence in a more desirable way that is, orally. Laddie J. explained the nature
of the skilled but non-inventive man in the art which suggests the notional
skilled worker has more extensive knowledge of the prior art. He said (at Para
64):
“This is not a real person. He is a legal creation. He is supposed to offer an
objective test… He is deemed to have looked at and read publicly available
documents and to know of public uses in the prior art. He understands all

80
Ibid at Pg 73-74
81
[1995] RPC 705 at 747
82
Narayanan P., Patent Law, Eastern Law House, Fourth Edn., 2006 Pg. 401
83
[2001] FSR 201

48
 languages and dialects. He never misses the obvious nor stumbles on the
inventive. He has no private idiosyncratic preferences or dislikes. He never
thinks laterally. He differs from all real people in one or more of these
characteristics. A real worker in the field may never look at a piece of prior
art…for example he may never look at the contents of a particular public
library – or he may be put off because it is in a language he does not know.
But the notional addressee is taken to have done so.”

Laddie J went on to point out that anything which is obvious over the prior art
cannot be subject to a valid patent application even if, in practice, few would
have found it or have bothered to look at it. Whilst the real worker might miss
some of the prior art, the notional skilled man never does. The rationale is that
a person should not be able to obtain a monopoly over the prior art and
anything obvious over it. 84

Mosaicing as a possible challenge to inventive step

Obviousness is judged by looking at the invention as a whole and considering
the entire state of the art at the relevant time. A process known as ‘mosaicing’
has occasionally been used to attack the validity of a patent by showing that it is
obvious. This process consists of piecing together several unrelated bits of
information in different documents which, when combined, are capable of
showing obviousness. But the use of such a technique is theoretically very
unsound because, if this is the first time the mosaic has been constructed, that
in itself is indicative of non-obviousness. If it were otherwise someone else
would have pieced the bits together previously. In practice, mosaicing is
unlikely to find favour in the courts, although there are exceptions – for
example, where it would be reasonable for the notional uninventive skilled
worker to fit the pieces together, an unlikely phenomenon as the very act of
mosaicing implies both detective and inventive skills. 85 Accepting that the

84
Bainbridge, David. Intellectual Property, 6th Edition. Pearson Longsman (2006) Pg 351
85
Bainbridge, David. Intellectual Property, 6th Edition. Pearson Longsman (2006) Pg 352

49
skilled man has no inventive faculties (‘incapable of a scintilla of invention’), in
the case of Technograph Printed Circuits Ltd v. Mills & Rockley (Electronics)
Ltd.86, Lord Reid said of mosaicing:
“When dealing with obviousness, unlike novelty, it is possible to make a
‘mosaic’ out of the relevant documents, but it must be a mosaic which can
be put together by an unimaginative man with no inventive capacity”.

Commercial Success as an indicator of obviousness

When obviousness has to be determined retrospectively, for example where the
validity of a patent is in issue, commercial success is an important and telling
factor that can be taken into account. If the invention fulfils a ‘long-felt want’,
this is good evidence of non-obviousness. However, commercial success can
never be decisive and, if is taken as a yardstick of non-obviousness,
consideration must also be given to other factors such as market forces and
nature of the advertising used to promote the product. Commercial success as
an indicator of obviousness must be treated cautiously. One can assume that
commercial success of the product is due to the demand in the market and that
the demand would have been long since satisfied had the invention been
obvious. However, the opposite assumption is not tenable: lack of success does
not necessarily directly equate to obviousness. Something might be highly
inventive but fail to sell because, put simply, consumers have no desire for it. 87

In Haberman v. Jackel International Ltd. 88 , Laddie J. stated the utility of

commercial success as an indicator of non-obviousness. The invention was for a
spill-proof training cup for young children. It was very successful, annual sales
reaching a peak of nearly 2 million. Although it is possible to make large profits
by using effective marketing to sell a non-inventive product, Laddie J set out a
list of nine factors, which he admitted was not an exhaustive list. These factors

86
[1972] RPC 346 at 355
87
See Bainbridge, David. Intellectual Property, 6th Edition. Pearson Longsman (2006) Pg 352-353
88
[1999] FSR 683

50
pointed one way or another in determining whether there was an inventive step
and included:
1. The problem addressed by the claimed invention.
2. The period of time that problem has existed.
3. The significance of the problem.
4. How widely known the problem was and how many were likely to have
been seeking a solution.
5. The prior art known to those seeking a solution.
6. Alternative solutions put forward before the publication of the patent.
7. What, if any, factors may have held back exploitation of the solution
even if it was technically obvious?
8. How well was the patentee’s development received?
9. The extent to which it could be shown that the commercial success was
due to the technical merits of the development because it solves a
problem.

In the instant case, the court considered the remarkable commercial success of
the invention helpful. There had been a long-felt want as the problem had
existed for a long time and there had been many attempts to make spill-proof
training cups. The invention was a simple but very effective solution and
represented a step that anyone in the industry could have made in the
preceding ten years. Against that background, there was an inventive step.
Where there are numerous attempts to find a solution to a known problem and
those developed before the claimed invention are significantly inferior to it as a
solution to the problem, this fact is almost conclusive of non-obviousness.

What constitutes an inventive step may depend on the nature of the invention.
The matter was considered by Lord Hoffmann in Biogen Inc v Medeva plc89 as
follows:

89
[1997] RPC 1 (at page 34)

51
 "Whenever anything inventive is done for the first time it is the result of
the addition of a new idea to the existing stock of knowledge. Sometimes, it
is the idea of using established techniques to do something which no one
had previously thought of doing. In that case the inventive idea will be
doing the new thing. Sometimes it is finding a way of doing something
which people had wanted to do but could not think how. The inventive idea
would be the way of achieving the goal. In yet other cases, many people
may have a general idea of how they might achieve a goal but not know
how to solve a particular problem which stands in their way. If someone
devises a way of solving the problem, his inventive step will be that
solution, but not the goal itself or the general method of achieving it."90

There seems to be a fine line drawn between what does and what does not
constitute an inventive step. Even if the inventiveness appears at first sight
trivial, the utility of the new invention and whether it is a significant
improvement in the state of the art should be considered. Also one has to ask
the obvious question: Why did nobody else do it before? After all, many of the
most successful inventions seem, in retrospect, to be very simple, but simplicity
should not be confused with obviousness.91

Lastly, it is important to remember the philosophy behind the doctrine of

obviousness, which is, that the public should not be prevented from doing
anything which was merely an obvious extension or workshop variation of what
was already known at the priority date. 92

2.3.2.3 Capable of Industrial Application

After satisfying the criteria of novelty as well as inventive step, the third
essential criteria is that the invention must be capable of industrial application.

90
http://www.ipo.gov.uk/consult-inventive.pdf visited on 10th April 2012 at 10.50 p.m.
91
Bainbridge, David. Intellectual Property, 6th Edition. Pearson Longsman (2006) Pg 356
92
See PLG Research Ltd. v. Ardon International Ltd., [1995] RPC 287 at Pg 313

52
‘Industrial Application’ criterion is said to be satisfied if the invention can be
made or used in any kind of industry, including agriculture.93 However, an
exception to this is an invention relating to method of treatment of human or
animal body by surgery or therapy or a method of diagnosis practiced on the
human or animal body. But the said exclusions do not extend to products
consisting of substances or compositions used in any such methods. 94

2.3.3 United States

As mentioned earlier, the essential conditions of patentability in US are
novelty95, non-obvious subject matter96 and that the invention must be useful97

2.3.3.1 Novelty
Section 102 of the title 35 of United States Code states the conditions for
patentability; novelty and loss of right to patent. In United States, until now,
patent was granted on the principle of first to invent and not first to file. Thus
the novelty requirements in US are far more complex than those systems in
which the filing date is crucial. The first requirement is that the applicant must
himself have invented the subject matter of the application, and must have not
abandoned it at any time.98

Section 102 elaborates on the requirement of novelty by setting forth certain

situations that demonstrate the invention is not novel. Most codify the basic
principle that the first to invent will be granted a patent.

93
See Section 4 of UK Patent Act, 1977
94
See Section 4A of UK Patent Act, 1977
95
See Section 102 of Title 35 of USC
96
See Section 103 of Title 35 of USC
97
The criterion of usefulness can be gathered from Article 1, Section 8 Clause 8 of the US Constitution
itself which provides that patent protection is available for “useful arts”, and Section 101 of 35 of USC
in defining what is patentable, states that patents are available for useful processes, machines,
manufactures, and compositions of matter.
98
See Section 102(c) of Title 35 of USC

53
Inventions known or used by others
A patent application will be denied if the invention was known or used by
others in US, or patented or described in a printed publication in US or a
foreign country, before the applicant invented the subject matter of the
application for patent. 99 In such a case, it is deemed that the applicant’s
invention was anticipated and an application will be denied. This is often called
the doctrine of anticipation. This principle is intended to ensure that a second
or junior inventor does not secure a monopoly on an invention that a senior
inventor owns or that is in the public domain.

Invention subject of a prior application

An application for patent will be denied if the invention was the subject of a
patent granted on an application filed in the US before its invention by the
applicant.100 For example, if inventor ‘P’ invents a new type of pen and files an
application for patent for it on March 12, 2006, and ‘Q’ invents same type of pen
one month later, ‘P’ will have priority (if P’s application matures into a patent
registration) and inventor ‘Q’s application will be denied, even if P’s invention
was not known or used in United States or described in a printed publication.
Thus Q’s invention will not be novel if it is the subject of an existing patent
application.

Inventions first invented by others

An application for a patent will be denied if before the applicant’s invention, the
invention was made in US by another who had not abandoned, suppressed, or
101
concealed it. Because abandonment, suppression and concealment of
information that could be valuable and beneficial to the public are contrary to
patent law policy, patent law punishes such acts by allowing the second
inventor to secure a patent though another person previously invented the item
or process.

99
See Section 102 (a) of Title 35 of USC
100
See Section 102 (e) of Title 35 of USC
101
See Section 102 (g) of Title 35 of USC

54
All the above situations are intended to ensure patents are granted to the first
inventor.

Invention is in use or on sale

A patent will not be granted if the invention was patented or described in a
printed publication in US or a foreign country or in public use or on sale in US
more than one year prior to the application for patent in the United States.102
This requirement intends to ensure that the inventors act promptly to secure
protection for their inventions.

Invention is subject of a Foreign Patent

A patent will be denied to an applicant if the invention was the subject of a
patent application filed either by him or his legal representative in a foreign
country twelve months before an application was made in the US and the
patent was issued in the foreign country before the application was made in the
United States.103

Applicant did not invent the invention

Only the inventor is entitled to a patent for the invention or discovery. The
applicant if he is not the inventor himself then the patent will not be granted to
him.104 The inventor is the person who conceived the specific invention. For
example, an employee who invents a product while on job remains the inventor.
Although he employer may have a contractual right to own the invention
created by employee, a patent application must be filed by the individual
inventor. It can, however, be assigned to the employer or another person
concurrently with filing. Parties who work jointly on an invention may be joint
inventors even though their contributions are not equal or simultaneous. An

102
See Section 102 (b) of Title 35 of USC
103
See Section 102 (d) of Title 35 of USC
104
See Section 102 (f) of Title 35 of USC

55
application for the resulting invention must name all the inventors is such a
case.105

As per United States practice disclosure of a broad genus in a prior art reference
is generally not considered novelty destroying as anticipating each individual
member of the genus.106

In In re Hall (781 F. 2d 897 (Fed. Cir. 1986), the question was whether the
availability of published version of a doctoral thesis prior to the filing date of
application would bar patentability of an invention on the ground of prior
publication. There was no evidence that the dissertation was indexed in the
library catalogue prior to the filing date. Even if it was catalogued, the question
was whether the presence of a single catalogued thesis in the University library
would constitute sufficient accessibility of the public. The librarian testified that
the procedure for accession of the book was followed. The Court rejected the
patent claim on the ground that the printed publication bar is grounded on the
principle that once an invention is in the public domain, it is no longer
permissible by anyone.107

The concept of novelty in US is currently complicated due to the first to file

system. However, this status of law will change due to the America Invents Act
(AIA) that will bring into effect the first to file system in US from 16th March
2013, and therefore the law of novelty will substantially change.108

105
Bouchoux Deborah E., Intellectual Property: The Law of Trademarks, Copyrights, Patents, and
Trade Secrets, West Legal Studies, (2000), Pg 262 -263
106
In re Arkley, 455 F. 2d 586 (CCPA 1972).
107
Dr. Ramakrishna T., Basic Principles & Acquisition of Intellectual Property Rights, CIPRA,
National Law School of India University, 4th Edn., (2008) Pg. 21
108
See article written by Gene Quinn, President and Founder of IP Watchdog, Inc. retrieved from
http://www.ipwatchdog.com/2012/06/02/patentability-overview-when-can-an-invention-be-
patented/id=23863/

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2.3.3.2 Non-obvious
Besides being novel, the invention has to satisfy the criteria of non-obviousness.
The invention must be non-obvious to those having skill in the field or art to
which the subject matter pertains.109
The subject matter sought to be patented must be sufficiently different from
what has been used or described before that it may be said to be non-obvious to
a person having ordinary skill in the area of technology related to the invention.
For example, substitution of one material for another in an invention and mere
changes in the size are ordinarily not patentable because they are obvious. A
distinct improvement, however, is patentable even if the new invention
improves matter in the public domain. Similarly, a new use of a known process
is patentable.110
Determining whether an invention is non-obvious is one of the most difficult
tasks in the patent law. After all, a disposable razor, a safety pin, and a
retractable tape measure all seem obvious now, yet none of these items were
obvious at the time they were invented.111
Until the 1952 Patent Act, Courts generally required that an invention result
from a ‘flash of genius’ or some sudden insight. The view was that an invention
must have been so non-obvious that no amount of diligent research would have
produced it. The act now states that “patentability shall not be negatived by the
manner in which the invention was made”.112 Thus, whether an invention is
produced by dint of arduous research or a flash of genius does not determine
whether it is non-obvious. The present method of determining non-obviousness
is by reference to the prior art.

109
See Section 103 of Title 35 of USC
110
Bouchoux Deborah E., Intellectual Property: The Law of Trademarks, Copyrights, Patents, and
Trade Secrets, West Legal Studies, (2000), Pg 263
111
Ibid.
112
See Section 103 of Title 35 of USC

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Graham Factors
In Graham v. John Deere Co.113, the US Supreme Court laid down following
principles for determination of non-obviousness:
1. One must review the scope and content of the prior art
2. Consideration must be given to differences between the prior art and the
invention at issue.
3. Consider the level of ordinary skill in the prior art (A person of ordinary
skill is neither a highly sophisticated expert or genius in the art nor a
layperson with no knowledge of the field of art but rather some
hypothetical person who is aware of the pertinent prior art).
Besides, the above principles which are based upon making of factual
enquiries the court suggested that some secondary considerations, all of
which are nontechnical and objective, could be considered in determining
non-obviousness. The secondary considerations could be commercial
success of the product, long-felt need, commercial acquiescence, and
copying or imitation by others.

One area that has caused debate over obviousness relates to new inventions
consisting of a combination of older, known elements. The unique combination
of the elements may make the invention novel, but the combination must be
non-obvious to receive patent protection. A factor sometimes used in
determining whether these patents, called combination patents, are non-
obvious is synergism: the newly combined elements must result in some
different function or some result that is different or unexpected such that one
who possesses ordinary skill in the art would not have predicted the result of
the combination of the known elements. If there is such a new result, the
invention is non-obvious and is patentable.114

113
383 U.S. 1 (1966)
114
Bouchoux Deborah E., Intellectual Property: The Law of Trademarks, Copyrights, Patents, and
Trade Secrets, West Legal Studies, (2000), Pg 264

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In Anderson’s Black Rock, Inc v. Pavement Salvage Co.115, the US Supreme Court
held that to be patentable, a combination of old components or techniques had
to demonstrate a new function or effect not predictable from the aggregation of
the individual elements.

A process is a method of doing something to produce a given result. According

to Cochrane v. Deener, 116 a process is “an act, or series of acts, performed upon
the subject matter to be transformed and reduced to a different state or thing. If
new and useful, it is just as patentable as is a piece of machinery”.117

2.3.3.3 Utility or Usefulness

The US Constitution itself provides that the patent protection is available to
“useful arts”.118 Further Section 101 of Title 35 of United States Code states that
patents are available for useful processes, machines, manufactures, or
composition of matter, or for any useful improvement thereof.

Although usefulness is not a stringent standard, the invention must be of some

benefit to humanity. Mere novelties or inventions that conflict with scientific
principles, such as perpetual motion machine, are not patentable because they
are not useful. Similarly, inventions whose only purpose is detrimental or
dangerous or would promote illegal ends cannot be patented inasmuch as, by
definition, they are not useful. For example, a patent was denied for a process of
making a low-cost tobacco leaf that resembled a more select leaf on the basis
that its only purpose was to deceive consumers. Richard v. Du Bon, 103 F. 868
(2d Cir. 1900)119

115
396 U.S. 57 (1967)
116
94 U.S. 780, 787-88 (1877)
117
Bouchoux Deborah E., Intellectual Property: The Law of Trademarks, Copyrights, Patents, and
Trade Secrets, West Legal Studies, (2000), Pg 259
118
United States Constitution, Article 1, Section 8.
119
Bouchoux Deborah E., Intellectual Property: The Law of Trademarks, Copyrights, Patents, and
Trade Secrets, West Legal Studies, (2000), Pg 260

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The patent law specifies that the subject matter must be “useful”. The term
“useful” in this connection refers to the condition that the subject matter has a
useful purpose and also includes operativeness, that is, a machine which will
not operate to perform the intended purpose would not be called useful, and
therefore would not be granted a patent.120

The US Supreme Court in Brenner v. Manson121 first confirmed the requirement

of utility in US law. The claimed process produced a previously known
compound without any known utility but several of its homologues were clearly
useful. The court decided that a mere research interest or further investigation
was not to be construed as a utility.

2.4 COMMONALITIES AND DIFFERENCES IN BASIC PRINCIPLES – INDIA,

UK AND US
Indian Patent Law initially was influenced by UK Patent law and judicial
decisions based on it, as India was ruled by the British. Today too the
interpretation of Patent Law by the Indian judiciary takes a persuasive value of
British Courts decisions and principles laid down in various patent related
matters. However, in recent years a few unique provisions have been added in
the Indian Patent Law (example Definition of inventive step, compulsory
licence and so on). Some of the major changes in the Indian Patent Law
(example changing to product patent system in fields of food, drug and
medicines) from the year 1995 to 2005 were due to fulfilment of its obligations
under the WTO – TRIPS Agreement.

The UK Patent law does not define invention, however it does not cause much
problems as the basic concepts of ‘novelty’, ‘inventive step’ and ‘capable of
industrial application’ have been interpreted by the Courts in such a way that it
has produced an effective and practical explanation of the concept of invention.

120
http://www.uspto.gov/patents/resources/general_info_concerning_patents.pdf visited on 18th April
2012 at 2.45 p.m.
121
383, U.S.S 19, 148 USPQ 689 (1966)

60
The US Patent Law as contained in Title 35 of United States Code, discusses
three types of patent (utility patent, design patent and plant patent), however,
the comparison in the research thesis is only in respect of utility patent. As per
Section 100 of Title 35 of United States Code, ‘invention’ means ‘invention or
discovery’. The word ‘discovery’ is not found in the patent law of India and UK.
In US, the basic requirements for grant of patent are novelty, non-obvious
subject matter and that invention must be useful.

In respect of part of the chapter dealing with ‘justifications for patents’, it is

learnt that various theories have evolved to justify protection of inventions such
as the contract theory, reward theory, incentive theory and natural rights
theory. In the opinion of the researcher, the current patent law system, even
though it may not be the sole reason for growth of inventions and technology, it
offers strong legal protection which eases the inventor or its assignees from the
threat of others usurping its invention and associated profits. Today, grant of a
patent or even applying for a patent for a particular invention (product or
process) creates a brand image for the concerned individual inventor or
company employing people in R & D. This brand building is also often done by
advertising the fact that the concerned product or process is a patented one.
Ultimately all this may lead to successful commercialization of invention. Thus
the patent system not only confers legal protection, but in a way encourages
innovation, helps commercialization and creates an environment for constant
advancement of technology in various fields.

Though the terminology of basic concepts (Novelty, non-obviousness and

utility) used in patent law differs in India, United Kingdom and United States,
the legal understanding and usage of these concepts for the purpose of granting
a patent have been more or less uniform.

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