Answer 2-: Inventive Step and Capable of Industrial Application'

ANSWER 2-
The ‘invention’ has been defined under Section 2 (j) of the Patents Act of 1970 as:
(i) art, process, method or manner of manufacture;
(ii) machine, apparatus or other article;
(iii) substance produced by manufacture, and includes any new and useful
improvement of any of them, and an alleged invention;
The definition of ‘invention’ was modified by the Patents (Amendment) Act, 2002. The
modification of the definition was made to align it with the definition of Article 27 of the TRIPS.
Thus, ‘invention’ is currently defined as ‘a new product or process involving one or more
inventive step and capable of industrial application’.
Under Sec. 2(1)(ja) of Patents Act, 1970 ‘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.”
The courts in India have observed that whether the alleged invention involves novelty and
inventive step is a mixed question of law and fact that depends on the circumstances of the case.
In Neiveli Ceramics & Refractories Ltd. v. Hindustan Sanitaryware & Industries Ltd., it was held
that even the disclosure to one person of the features claimed an invention earlier than the so
called invention date would be enough to defeat a claim of novelty.
Inventive step/Non Obviousness
The text of the Act by the 2005 amendment defines “inventive step” as a feature of an invention
that involves a “technical advance” as compared to existing knowledge; or as having “economic
significance” or “both” that makes the invention not obvious to a person skilled in the art.
According to the draft Manual on Patent Practice and Procedure (hereinafter, the “MOPP”), the
Patent Office considers the following factors to determine inventive step:
1. scope and content of the prior art;
2. assessing the technical result and the economic value achieved by the invention;
3. differences between the relevant prior art and the claimed invention;
4. defining the technical problem to be solved as the object on the invention to
achieve the result; and
5. final determination of non obviousness etc.
The Patents (Amendment) Act, 2005 attaches great significance to “economic value” factor as it
alone could satisfy the test of inventive step. The standard for “economic significance” seems
more relevant for assessing the industrial applicability than being a qualification for “inventive
step.” Even though the Act does not define state of art or prior art, they have been included in the
Act. The test for judging inventive step depends on the question whether a non - inventive mind
have thought of the alleged invention. If the answer is negative, then the invention is considered
non-obvious. The courts have at times held that the inventive step or obviousness has to be
judged from the point of view of a person skilled in the art. A person skilled in the art should be
presumed to be an ordinary practitioner aware about what is common knowledge in the relevant
art at the relevant time. How far such knowledge anticipates the new invention is a question of
fact depending on the facts and circumstances of the case. The invention is to be considered as a
whole for assessing the inventive step and a conclusion cannot be drawn merely because an
individual element of the claim taken separately is known or might be found to be obvious. In
order to deprive an invention of patentability on the ground of anticipation by prior publication,
it must be shown that the invention claimed was published in any documents prior to the date of
the application. The amended definition of ‘inventive step’ combines the inventive step inquiry
with a test ‘economic significance’ and raises a set of practical issues when prosecuting a patent
application in India. Examiners are unclear how to apply the amended definition.
It can be observed that while new pharmaceutical drugs are patentable under both the US and
Indian Patent Laws, Indian Patent Law is more restrictive in granting pharmaceutical patents.
This is despite legal and inventive step arguments made by an Applicant because pharmaceutical
inventions will likely require evidence of significantly higher efficacy in order to be granted.
Circumstance under which patent can be revoked

As per Section 64 of the Patent Act, 1970, the following persons can file the petition in the High
Court:
a. any person interested;
b. the Central Government
c. the person making the counter-claim in a suit for the infringement of a patent
A revocation petition can be filed in the Intellectual Property Appellate Board by the interested
person or the Central Government, or it can be filed as a counter-claim in a suit for infringement
at the High Court. To bring in the aspect about jurisdiction of suits of infringement and the
corresponding revocation petitions, Section 104 of the Patents Act, 1970 states that no suit of
infringement can be brought before a court inferior to the District Court having jurisdiction to try
the suit and in the event of a counter-claim for revocation of the patent made by the defendant,
such suit for infringement and the said counter-claim must be transferred to the High Court.
Under Section 64, the following are the said grounds:
1. the patent was granted on the application of a person not entitled to apply therefor;
2. the patent was obtained wrongfully in contravention of the rights or the petitioner or any
person under or through whom he claims;
3. the subject of any claim of the complete specification is not an invention;
4. the invention so far as claimed in any claim of the complete specification is not new,
having regard to what was publicly known to publicly used in India before the priority
date of the claim or to what was published in India or elsewhere in any of the documents
referred to in Section 13;
5. the invention so far as claimed in any claim of the complete specification is obvious or
does not involve any inventive step, having regard to what was publicly known or
publicly used in India or what was published in India or elsewhere before the priority
date of the claim;
6. the invention, so far as claimed in any claim of the complete specification, is not useful;
7. the complete specification does not sufficiently and fairly describe the invention and the
method by which it is to be performed, that is to say, that the description of the method or
the instructions for the working of the invention as contained in the complete
specification are not by themselves sufficient to enable a person in India possessing
average skill in, and average knowledge of the art to which the invention relates, to work
the invention, or that it does not disclose the best method of performing it which was
known to the applicant for the patent and for which he was entitled to claim protection;
8. that the scope of any claim of the complete specification is not sufficiently and clearly
defined or that any claim of the complete specification is not fairly based on the matter
disclosed in the specification;
9. that the patent was obtained on a false suggestion or representation;
10. that the subject of any claim of the complete specification is not patentable under this
Act;
11. that the invention so far as claimed in any claim of the complete specification was
secretly used in India, otherwise than as mentioned in sub-section (3), before the priority
date of the claim;
12. that the applicant for the patent has failed to disclose to the Controller the information
required by section 8 or has furnished information which in any material particular was
false to his knowledge;
13. that the applicant contravened any direction for secrecy passed under section 35
14. that leave to amend the complete specification under section 57 or section 58 was
obtained by fraud.
15. that the complete specification does not disclose or wrongly mentions the source or
geographical origin of biological material used for the invention;
16. that the invention so far as claimed in any claim of the complete specification was
anticipated having regard to the knowledge, oral or otherwise, available within any local
or indigenous community in India or elsewhere.
Under Section 65 of the Act, if a patent is claimed to be related to atomic energy, a revocation
petition can be filed against it. Such patent shall not be granted under the Atomic Energy Act,
1962 and shall be revoked. Under Section 66 of the Act, if the Central Government is of the
opinion that a patent or the mode in which it is exercised was mischievous to the State or
prejudicial to the public, after giving an opportunity to the patentee to be heard, it may make
such declaration in the Official Gazette and the patent shall stand revoked.

Answer 2-: Inventive Step and Capable of Industrial Application'

Uploaded by

Copyright:

Available Formats

Answer 2-: Inventive Step and Capable of Industrial Application'

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Answer 2-: Inventive Step and Capable of Industrial Application'

Uploaded by

Copyright:

Available Formats

ANSWER 2-

Circumstance under which patent can be revoked

Under Section 64, the following are the said grounds:

You might also like

Pfad - The Proxy pFad of © 2024 Garber Painting. All rights reserved.