CLASS NOTE

JOGESH CHANDRA CHAUDHURI LAW COLLEGE

SUBJECT: PATENT RIGHT CREATION AND REGISTRATION OF PATENT
TOPIC: PATENTABLE AND NON-PATENTABLE INVENTIONS
B.A. LL.B 7 TH SEMESTER (HONOURS-PAPER I)
FACULTY: KRISHNENDU ROY SARKAR

Section-2(1)(j) "invention" means a new product or process involving an inventive step and
capable of industrial application.

Section-2(1)(ja)"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.

Section-2(1)(l) "new invention" means any invention or technology which has not been
anticipated by publication in any document or used in the country or elsewhere in the world
before the date of filing of patent application with complete specification, i.e., the subject
matter has not fallen in public domain or that it does not form part of the state of the art.

Section-2(1) (ac) "capable of industrial application", in relation to an invention, means that

the invention is capable of being made or used in an industry.

INVENTIONS NOT PATENTABLE

SECTION 3: [WHAT ARE NOT INVENTIONS]

The following are not inventions within the meaning of this Act,—

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

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

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

(d) the mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mere discovery of any new property

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or new use for a known substance or of the mere use of a known process, machine or apparatus
unless such known process results in a new product or employs at least one new reactant.
Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites,
pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other
derivatives of known substance shall be considered to be the same substance, unless they differ
significantly in properties with regard to efficacy;

(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties
of the components thereof or a process for producing such substance;

(f) the mere arrangement or re-arrangement or duplication of known devices each functioning
independently of one another in a known way;

(g)..(omitted)

(h) a method of agriculture or horticulture;

(i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or
other treatment of human beings or any process for a similar treatment of animals to render
them free of disease or to increase their economic value or that of their products.

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

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

(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
including cinematographic works and television productions;

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

(n) a presentation of information;

(o) topography of integrated circuits;

(p) an invention which in effect, is traditional knowledge or which is an aggregation or

duplication of known properties of traditionally known component or components.

SECTION 4: [INVENTIONS RELATING TO ATOMIC ENERGY NOT PATENTABLE]

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No patent shall be granted in respect of an invention relating to atomic energy falling within
sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962).

ANALYSIS OF STATUTORY CRITERIONS OF PATENTABILITY

NOVELTY [SECTION 2(1)(j), 13, 29- 34]:

1. An invention is considered as new(novel), if it is not anticipated by prior publication in patent

and non-patent literature, i.e., an invention is novel if it has not been disclosed in the prior art,
where the prior art means everything that has been published, presented, or otherwise disclosed
to the public before the date of filing/priority date of complete specification.

2. An invention is considered as novel if it has not been anticipated by prior use or prior public
knowledge in India.

3. For the purpose of determining novelty, an application for patent filed at the Indian Patent
Office before the date of filing of complete specification of a later filed application, but
published after the same, is considered for the purposes of prior claiming.

4. While ascertaining novelty, the Examiner takes into consideration, inter alia, the following
documents:-

• which have been published 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.
• such Indian Patent Applications which have been filed before the date of filing of
complete specification and published on or after the date of filing of the complete
specification, but claims the same subject matter.

5. The examiner shall make such investigation for purpose of ascertaining whether the
invention, so far as claimed in any claim of the complete specification, has been anticipated by
publication in India or elsewhere in any document other than those mentioned in section 13(1)
before date of filing of the applicant’s complete specification.

6. A prior art is considered as anticipating novelty if all the features of the invention under
examination are present in the cited prior art document.

7. The prior art should disclose the invention either in explicit or implicit manner. Mosaicing
of prior art documents is not allowed in determination of novelty.

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8. A generic disclosure in the prior art may not necessarily take away the novelty of a specific
disclosure. For instance, a metal spring may not take away the novelty of a copper spring.

9. A specific disclosure in the prior art takes away the novelty of a generic disclosure. For
instance, a copper spring takes away the novelty of a metal spring.

10. In a case where a prior art is cited as an anticipation in the Examination Report, the onus
of proving that the same is not to be an anticipation by reason of Section 29-34, lies on the
applicant.

Addition patent: An application for Patent of Addition cannot be challenged on the ground of
lack of inventive step with respect to the disclosure in the main application or patent. But the
disclosure in main application or patent may be cited for novelty against the application for
patent of addition. In the matter of Ravi Kamal Bali v/s Kala Tech and others the Bombay
High Court on 12th February, 2008 dismissed the defendant’s arguments that Patent of
addition can only be granted if it has an inventive step over the main application.

INVENTIVE STEP [SECTION- 2(1)(j), 2(1)(ja)]:

General Principles:

Inventive step is a feature of an invention that involves technical advance 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. While determining patentability of the invention, an
Examiner first conducts investigation as to whether the novelty of the claimed invention is
established and then proceeds to conduct examination on whether the claimed invention
involves the inventive step.

Determination of Inventive Step

1. For determination of inventive step, the prior art as a whole, revealed during the search
process, is relied upon to assess if such prior art(s) disclose(s) the claimed invention.

2. Invention as a whole shall be considered. In other words, it is not sufficient to draw the
conclusion that a claimed invention is obvious merely because individual parts of the claims
taken separately are known or might be found to be obvious.

3. If an invention lies merely in verifying the previous predictions, without substantially adding
anything for technical advancement or economic significance in the art, the inventive step is
lacking.
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4. For the purpose of establishing obviousness of the invention to a person skilled in the art,
mosaicing multiple documents of prior arts is permissible, if the cited prior art provides lead to
the skilled person to combine the teachings thereunder, at the time of filing or priority date of
patent application.

5. If the invention is predictable based on the available prior art, merely requiring workshop
improvement by a person skilled in the art, the inventive step is lacking.

Hon’ble Supreme Court of India on inventive step: In Biswanath Prasad Radhey Shyam vs
Hindustan Metal Industries Ltd it was held that ―The expression "does not involve any
inventive step" used in Section 26(1) (a) of the Act and its equivalent word "obvious", have
acquired special significance in the terminology of Patent Law. The 'obviousness' has to be
strictly and objectively judged. For this determination several forms of the question have been
suggested.

The one suggested by Salmond L. J. in Rado v. John Tye & Son Ltd. is apposite. It is:
"Whether the alleged discovery lies so much out of the Track of what was known before as not
naturally to suggest itself to a person thinking on the subject, it must not be the obvious or
natural suggestion of what was previously known." ―Another test of whether a document is a
publication which would negative existence of novelty or an "inventive step" is suggested, as
under: ―Had the document been placed in the hands of a competent craftsman (or engineer as
distinguished from a mere artisan), endowed with the common general knowledge at the
'priority date', who was faced with the problem solved by the patentee but without knowledge
of the patented invention, would he have said, "this gives me what I want?" (Encyclopedia
Britannica; ibid). To put it in another form: "Was it for practical purposes obvious to a skilled
worker, in the field concerned, in the state of knowledge existing at the date of the patent to be
found in the literature then available to him, that he would or should make the invention the
subject of the claim concerned ?"

In the F. Hoffman la Roche v Cipla case the Hon’ble Delhi High Court had observed that the
obviousness test is what is laid down in Biswanath Prasad Radhey Shyam vs Hindustan
Metal Industries Ltd (AIR 1982 SC 1444) and that ― “Such observations made in the foreign
judgments are not the guiding factors in the true sense of the term as to what qualities that
person skilled in the art should possess. The reading of the said qualities would mean qualifying
the said statement and the test laid down by the Supreme Court.”

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 Hon’ble High Court further added ―From the bare reading of the afore quoted
observations of Supreme Court, it is manifest that the Hon'ble Supreme Court has laid down
the test for the purposes of ascertaining as to what constitutes an inventive step which is to be
seen from the standpoint of technological advancement as well as obviousness to a person who
is skilled in the art. It is to be emphasized that what is required to be seen is that the invention
should not be obvious to the person skilled in art. These are exactly the wordings of New
Patents Act, 2005 u/s Section 2(ja) as seen above. Therefore, the same cannot be read to mean
that there has to exist other qualities in the said person like unimaginary nature of the person
or any other kind of person having distinct qualities…….. Normal and grammatical meaning
of the said person who is skilled in art would presuppose that the said person would have the
knowledge and the skill in the said field of art and will not be unknown to a particular field of
art and it is from that angle one has to see that if the said document which is prior patent if
placed in the hands of the said person skilled in art whether he will be able to work upon the
same in the workshop and achieve the desired result leading to patent which is under challenge.
If the answer comes in affirmative, then certainly the said invention under challenge is
anticipated by the prior art or in other words, obvious to the person skilled in art as a mere
workshop result and otherwise it is not. The said view propounded by Hon'ble Supreme Court
in Biswanath Prasad (supra) holds the field till date and has been followed from time to time
by this Court till recently without any variance….. Therefore, it is proper and legally warranted
to apply the same very test for testing the patent; be it any kind of patent. It would be improper
to import any further doctrinal approach by making the test modified or qualified what has been
laid down by the Hon'ble Supreme Court in of Biswanath Prasad (supra).”

The ― “obviousness” must be strictly and objectively judged. While determining inventive
step, it is important to look at the invention as a whole.

Accordingly, the following points need to be objectively judged to ascertain whether,

looking at the invention as a whole, the invention does have inventive step or not:

i. Identify the "person skilled in the art", i.e. competent craftsman or engineer as distinguished
from a mere artisan;

ii. Identify the relevant common general knowledge of that person at the priority date;

iii. Identify the inventive concept of the claim in question or if that cannot readily be done,
construe it;

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iv. Identify what, if any, differences exist between the matter cited as forming part of the "state
of the art" and the inventive concept of the claim or the claim as construed;

v. Viewed without any knowledge of the alleged invention as claimed, do those differences
constitute steps which would have been obvious to the person skilled in the art or do they
require any degree of inventive ingenuity?

Section 3(d): The mere discovery of a new form of a known substance which does not result
in the enhancement of the known efficacy of that substance or the mere discovery of any new
property or new use for a known substance or of the mere use of a known process, machine or
apparatus unless such known process results in a new product or employs at least one new
reactant is not an invention.

After analysing the legislative history of Section 3(d), the Hon’ble Supreme Court in the matter
of Novartis AG Vs. Union of India, W.P.No. 24760/06, commented, “We have, therefore, no
doubt that the amendment/addition made in section 3(d) is meant especially to deal with
chemical substances, and more particularly pharmaceutical products. The amended portion of
section 3(d) clearly sets up a second tier of qualifying standards for chemical substances/
pharmaceutical products in order to leave the door open for true and genuine inventions but, at
the same time, to check any attempt at repetitive patenting or extension of the patent term on
spurious grounds.”

It was further held by the Apex Court –

“in the case of medicines, efficacy means ― “therapeutic efficacy” and physico-chemical
properties of substances do not meet the requirement of ― “therapeutic efficacy”. It was also
held that patent applicants must prove the increase in therapeutic efficacy and just increased
bioavailability alone may not necessarily lead to an enhancement of therapeutic efficacy, and
in any given case, enhanced efficacy must be specifically claimed and established by research
data.

In this regard, in Para 187 of the Apex Court judgment, it is held that,

“..........the physico-chemical properties of beta crystalline form of Imatinib Mesylate, namely

(i) more beneficial flow properties, (ii) better thermodynamic stability, and (iii) lower
hygroscopicity, may be otherwise beneficial but these properties cannot even be taken into
account for the purpose of the test of section 3(d) of the Act, since these properties have nothing
to do with therapeutic efficacy.”

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Section 3(f): The mere arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way is not an invention.

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. A combination of old known integers may be so
combined that by their working inter-relation, they produce a new process or an improved
result. Mere collocation of more than one integers or things, not involving the exercise of any
inventive faculty, does not qualify for the grant of a patent. (Biswanath Prasad Radhey
Shyam Vs. Hindustan Metal Industries (1979) 2 SCC, 511).

A new and useful application of an old principle may be good subject matter. An improvement
on something known may also afford subject-matter; so also a different combination of matters
already known. A patentable combination is one in which the component elements are so
combined as to produce a new result or arrive at an old result in a better or more expeditious
or more economical manner. If the result produced by the combination is either a new article
or a better or cheaper article than before, the combination may afford subject-matter of a patent.
(Lallubhai Chakubhai Vs. Chimanlal and Co. (AIR 1936 Bom 99.)

An invention claiming a mere juxtaposition of known devices in which each device functions
independently is not considered patentable. Merely placing side-by-side old integers so that
each performs its own function independently of the others is not a patentable combination.
[As for example, a flour mill provided with sieving means].

However, where the old integers when placed together have some working interrelation,
producing a new or improved result, then there could be a patentable subject matter in the
working interrelation brought about by the collection of the integers.

When two or more features of an apparatus or device are known, and they are juxtaposed
without any inter- dependence on their functioning, they should be held to have been already
known. (Rampratap v. Bhabha Atomic Research Center, 1976 IPLR 28 P. 35), e.g., an
umbrella with fan (388/Bom/73), bucket fitted with torch, clock and transistor in a single
cabinet. These are not patentable, since they are nothing but mere arrangement and
rearrangement of items without having any working interrelationship between them and are
devices capable of functioning independently of each other.

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As for instance, in the case of an application for a patent in respect of an apparatus for
producing metallic bellows, the hydraulic machine and the roll forming machine disclosed
therein were functioning as separate machines independently of each other and as such had no
novel feature. Hence, there is no invention when a claim is made on known types of hydraulic
forming and roll forming machines functioning independently of each other.

A new combination may be the subject matter of a patent although every part of the
combination, per se, is old, for here the new article is not the parts themselves but the
assembling and working of the parts, together. The merit of a new combination very much
depends upon the result produced. Where a slight alteration turns that which was practically
useless into what is useful and important, it is fit subject matter for a patent. (Lallubhai
Chakkubhai v. Shamaldas Sankalchand Shah, AIR 1934 Bom 407).

INDUSTRIAL APPLICABILITY [SECTION - 2(1)(j), 2(1)(ac)]:

1. In order for an invention to be patentable, an invention must be capable of industrial

application. Industrial Application in relation to patentability means that the invention is
capable of being made or used in an industry.

2. The Examiner shall assess if the claimed invention is capable of use in any industry or made
using an industrial process. Typically, the specification explains the industrial applicability of
the disclosed invention in a self-evident manner. If it is not, a mere suggestion that the matter
would be industrially applicable is not sufficient. A specific utility should be indicated in the
specification supported by the disclosure. For example, indicating that a compound may be
useful in treating unspecified disorders, or that the compound has useful biological‖ properties,
would not be sufficient to define a specific utility for the compound. The specific usefulness
has to be indicated.

SUFFICIENCY OF DISCLOSURE [SECTION 10]:

Examiner while examining a patent application. The Examiner will look for whether:

a) the specification is properly titled.

b) the subject matter is fully and particularly described in the specification.

c) the claims define the scope of the invention properly.

d) the Specification describes the best method of performing the invention or not.

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e) the source and geographical origin of the same has been disclosed in the specification if the
invention is related to biological material and/or the biological material is used in the invention,

f) approval obtained from National Biodiversity Authority, (NBA) wherever applicable.

g) if the applicant mentions a biological material in the specification which may not be
described and if such material is not available to the public, the application shall be completed
by depositing the material to international depository authority under the Budapest treaty.

h) Accession Number and date of deposition of the material in the depository institution along
with name and address of the depository authority shall be given, if applicable.

UNITY OF INVENTION [SECTION 10(5)]:

1) The Claims of a Specification shall relate to a single inventive concept. In case, an

application comprises a plurality of inventive concepts the examiner refers to the same in his
report. The application may be divided in order to meet the objection of plurality of distinct
inventions.

2) The determination whether a group of inventions is so linked as to form a single inventive

concept shall be made without regard to whether the inventions are claimed in separate claims
or as alternatives within a single claim.

3) Unity of invention between process and apparatus or means requires that the apparatus or
means have been specifically designed for carrying out the process.

4) Independent claims of different categories may relate to a single inventive concept and may
be allowed in one application, when they are linked to form a single inventive concept and are
supported by the description.

For example:

a) Claims for a product and process specially adapted for manufacture of the product.

b) Claims for a process and apparatus or means specifically designed for carrying out the
process.

c) A mould for casting an article, a method of making that mould, a process of casting the article
by using the said mould will constitute a single invention.

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d) A locking system containing plug and socket wherein separate independent claims for a plug
and socket may constitute a single inventive concept.

e) A broadcasting system comprising transmitter and receiver.

f) If an invention relates to a new type of spray bottle, claims may be directed to the spray
bottle itself (a product) and a method of making the spray bottle (a process).

g) In case of a genetically modified Gene Sequence/Amino Acid Sequence claims may be

directed to a Gene sequence/ Amino Acid sequence, a method of expressing the sequence, an
antibody against that protein/sequence, a kit containing such antibody/ sequence.

h) In case of a drug or pharmaceutical product, claims may be directed to a drug or

pharmaceutical product, a process of making the product, a composition containing the drug.

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