PATENTABLE SUBJECT MATTER: EXAMINING THE BOUNDARIES OF PATENT PROTECTION

ABSTRACT

Initially, this comprehensive article explores the boundaries of patent protection in India, emphasizing the 20-year exclusive rights granted to inventors. Further, a historical overview traces the evolution of patent laws in India, leading to the current Patent Act of 1972. The standards of patentability such as novelty, inventive steps, and industrial application are dissected to determine eligibility, later the article elaborates on the subject matter of patents with notions of non-patentable inventions, from frivolous claims to agricultural methods, which are thoroughly examined under Section 3. Entirely the article delves into the complexities of inventive steps, emphasizing non-obviousness as a key criterion for patentability. In the end, it concludes by highlighting the delicate balance maintained by patent laws, ensuring alignment with principles of novelty, non-obviousness, and industrial utility.

KEYWORDS

Standards of Patentability, Patent eligibility criteria, Section 3 Exclusions, Capability of Industrial Application, Invention history in India.

INTRODUCTION

A Patent means an exclusive right given to a person from the Patent Office to exploit his invention for a certain period of time. In India, a patent is granted for 20 years. During this period, the inventor will have the right to exclude anyone (other than him or any other person to whom he has granted a license) from using such patent rights. The grant of the patent recognizes and rewards the creativity of the inventor and also promotes such furtherance of inventions in the country and also results in the technological development of the nation.

Owing to the contemporary era which is overflowing with numerous inventions, there is always chaos or baffling about what kind of invention can be patented and what cannot be, thus comprehension of patentable acts and non-patentable acts plays a significant role in today’s world scenario.

INTERPRETATION OF CERTAIN ESSENTIAL TERMS

Patent- The expression Patent implies a right granted to a person who invents or discovers a new and useful process, product, or article, where the right referred to is not regarding the use or practice of the invention but to exclude others from misusing his invention by selling or importing such patented invention without prior consent from the inventor during its period. According to section 2(1)(m) Patents Act, 1970, “Patent means a patent for any invention granted under the act”. It mainly refers to the monopoly right conferred by the patent office on an inventor to utilize his invention for a limited period of time.

Patentee- He is the person who is registered in the patent office as an original proprietor or grantee of such patent. In simple terms the Inventor who gets patent rights for his invention from the patent office.

Invention- Invention refers to any new product or process that involves an inventive step and is capable of industrial application. It must be noted that even the process which involves an inventive step in an invention comes within the ambit of this Act. Therefore, it is not necessary for the product invented to be completely a new product, even if a product is substantially improved by an inventive step, it would be identified as an invention. Generally, it is known as a Product and Process Patent.

HISTORY OF PATENT LAWS IN INDIA

In India, the Patent Act, of 1856 was first enacted on the basis of the British Patent Law of 1852 on Protection of Inventions. The act was later modified in 1859 in which patent monopolies which were called as exclusive privileges were granted for a period of 14 years from the date of filing the specification. These privileges include making, selling, and using inventions in India and authorizing others to do so. Consequently, the Patent and Designs Protection Act was adopted in 1872. Later Protection of Inventions Act was adopted in 1883, these acts were unified in 1888 as the Inventions and Designs Act. In 1911, the Indian Patents and Designs Act was enacted.

Further, there have been substantial changes in the political and economic conditions of the country from the date of the enactment of the 1911 Act. The need for a comprehensive law on patents was felt as it was realized that the 1911 Act was negligent to the needs of the society and was lagging with industrial development. Thus in 1948, the Government appointed a Patent Enquiry Committee to review the working of the patent laws in India. The committee submitted a final report in 1950 and the Patents Bill was introduced in Lok Sabha in 1953 which lapsed on the dissolution of the first Lok Sabha. Thus in 1957, Justice Rajagopala Ayyangar was appointed by the Government to freshly examine and review the patent laws in India and also to advise the Government on changes required to be made in the existing laws on patent protection, for which Justice Ayyangar submitted a comprehensive report famously known as Ayyangar’s report which became a basis for the Patents Bill 1965.

The current patent act in India is the Patent Act, of 1972 which came into force after the bill was passed again in the Parliament by both houses in 1970.

PATENTABLE SUBJECT MATTER – AN OVERVIEW OF STANDARDS OF PATENTABILITY

The Patentable, statutory, or patent-eligible subject matter simply refers to the subject matter of an invention concerning the discussion on whether such invention is eligible to have patent protection in the country. The Patent System mandates several conditions to every person who chooses to secure their invention by acquiring a patent right by registering in the patent office. These conditions make it obvious that the Government can only grant the patent when it is justified by the inventor.

Most of the Patent Systems mainly have three standards to determine whether the government can grant a patent or not, namely: novelty of the invention, inventive steps, and industrial application. The TRIPS agreement also reflects the same above-said conditions. The following are the essential matters to be encountered to make an invention be patentable:

Novelty in the Invention or New Invention

Basically, the term “New Invention” refers to the subject matter that has not fallen into the public domain or used in the country or elsewhere in the world before filing the patent application. This means that to be patentable, an invention should not be found in any matter whether a product or a process that has been made available to the public anywhere in the world by the written or oral description, by use, or in any other way. It makes it clear that Prior public knowledge of an invention will not be eligible for the grant of the patent, and this knowledge can be acquired by the public either by word of mouth or through books or any other media.

New Discovery not only means a new product of manufacture but also the process or the method of manufacturing something new as discussed above while interpreting the term “invention”.

Inventive Steps

The criteria of the Inventive step was introduced in the amendment of 2002, which is defined as a step that makes an invention not obvious to a person skilled in the art. The inventive step acts as an essential ingredient of the invention to make an applicant be eligible for a grant of the patent by proving that the invention involves technical advancements when compared to those which are already existing knowledge and makes the invention not obvious to the person skilled in the art.

Non-obviousness

In order, to be patentable, an invention should be non-obvious. The essential element of the newness and inventive steps will depend on the given facts of every case. If the particular method of the manufacture is same as the one previously invented, then there cannot be a novelty in the subject matter. If there is no inventive step, then it is considered as it is obvious.

In the case of Graham v. John Deere Co. of Kansas City, [1]383 US 1 (1966), the US Supreme Court held that obviousness should be determined by looking at the scope and content of the prior art, the level of ordinary skill in the prior art, the differences between the claimed invention and the prior art, and objective evidence of non-obviousness, such as commercial success, long-felt but unsolved needs; and failure of others.

Capable of Industrial Applications

The term capable of an industrial application refers to the inquiries of whether the invention is proficient enough to be utilized in an industry. In the case, Indian Vacuum Brake Co. Ltd v. E.S. Luard[2], AIR 1926 Cal 152 the court held that the mere usefulness was not sufficient to support the patent. Further in the case of Young and Neilson v. Rosenthal & Co.[3], (1884) 1 Pat. C. 1., the term ‘utility’ was described by the court as an invention better than the preceding knowledge of the trade as to a particular article.

The court elaborated in the case of F. Hoffmann-la Roche Ltd v. Cipla Ltd[4]., 2016 (65) PTC 1 (Del) (DB), p.15., by stating that 2(1)(ac) requires that an invention must have a commercial use or manifestation for it to be industrially applicable.

WHAT IS NOT AN INVENTION?

Even though certain articles discovered are recognized as inventions yet sometimes cannot be considered as inventions for the purpose of the patent. Section 3 of the act, outlines some situations where so-called inventions are yet not patentable.

The following are the inventions which are not eligible to be patentable as per Section 3 –

Frivolous Invention and contrary to the well-established Natural laws:

Clause(a) states that inventions that are frivolous or contradict to natural rules or laws of the country are not patentable. This rule ensures that patents are granted for those inventions that demonstrate novelty, non-obviousness, and industrial applicability, contributing to the technological process and not to the article which generally involves ideas presented as scientific without adhering to scientific principles.

For example, A perpetual motion machine that claims to generate infinite energy without any external input, or a machine allegedly giving 100% efficiency.

An Invention contrary to Public Order, Morality, or Environmental Well-being:

Clause(b) provides that an invention that is primarily used or intended to use or results in commercial exploitation of which could be antithetical to public order or morality or cause substantial harm to human beings, animals, flora, health, or the environment in total. The manual of Patent Office Practice and Procedure as modified on March 22, 2011, lists examples such as those inventions that might consist of hazardous poisons, destructive weaponry/lethal arms, or any device prepared with the intention to counterfeit currency, gambling, a device for house-breaking, something which is likely to violate the well-accepted and settled social, cultural, legal norms, etc.

Mere Discovery of Scientific Principles or Natural Substances:

As per clause(c), any simple discoveries of scientific concepts or theoretical assumptions are not patentable. Inventions involving discovering any living thing or a non-living thing in nature are also non-patentable. For example, discovering a DNA sequence found in a certain plant species comes within this ambit.

Mere Discovery of New Form, New Property, or New Use of a Known Substance:

Clause(d) specifies that the mere identification of a novel version of a known chemical lacking enhanced efficacy does not meet the criteria for patent eligibility. Similarly, unless it results in the composition of a new product or the use of a new reactant, the mere discovery of a new property or purpose for a known substance is excluded. For example, the discovery of known objects such as salt, esters, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, etc. (said to be patentable only if they differ significantly in properties concerning efficacy), in the case of F. Hoffmann-la Roche Ltd v. Cipla Ltd.[5] ., 2016 (65) PTC 1 (Del) (DB),p.15., the court held that the legislature has considered that the above stated articles to be the ‘same substance’ for the purpose of this provision. Thus, a new form is not the same substance; a new form is not the same product; and one will get a patent for the new form if the enhancement of efficacy is shown, if not it is considered as the ‘same substance’.

The term efficacy is discussed in the case of Novartis AG v. Union of India,[6] 2013 (54) PTC 1 (SC) at pp. 76-77., the Supreme Court held it as “the ability to produce a desired or intended result”. The efficacy test in the context of section 3(d) would be different, depending upon the function, utility, or purpose of the product under consideration. For instance, in the case of a medicine that claims to cure a disease, the test of efficacy can only be “therapeutic efficacy”. Further, the question may arise concerning the parameter of therapeutic efficacy and the advantages and benefits that may be taken into account for determining the enhancement of therapeutic efficacy. Concerning the genesis of this clause(d), and more particularly the circumstances in which this clause was amended to make it even more constructive than before, the therapeutic efficacy of a medicine must be judged strictly and narrowly. And it further stated that not all advantageous or beneficial properties are relevant but only such properties that directly relate to efficacy, which in the case of medicine, as seen above in its therapeutic efficacy.

Mere Aggregation or Admixture of Substances:

Clause(e) points out that any substance obtained by a simple mixing resulting in the aggregation of the qualities of its components, or a process for making such material, is not patentable. In simple words, a combination of existing substances cannot be patented if it does not result in a new product with improved features. Any admixture resulting in properties combined is not considered a mere admixture, e.g., a soap, detergent, lubricant and polymer composition, etc.

In an infringement case of M/s. Stanipack Pvt. Ltd. v. M/s. Oswal Trading Co. Ltd.[7], AIR 2000 Del 23, the defendant challenged the validity of the patent of the plaintiff for the invention for the manufacture of the pouch for storage and dispensing of a liquid such as lubricating oil. The Delhi High Court while revoking the patent on the ground that the invention was not new and not an invention within the meaning of section 3, observed the thickness of plastic film/layer depends upon the tolerance of the contents of the pouch. Thus, the Hon’ble High Court held that the same refers to a mere arrangement and re-arrangement of the mixture of the material and cannot be termed as a new concept and does not have any novelty.

Duplication of Known Devices:

Clause(f), prohibits patents for inventions involving the mere imitation of existing devices, in which each function independently, is not patentable and also two or more features of a device are known, and they are juxtaposed (the act of placing or positioning two or more things, often contrasting or complementary elements, side by side for comparison or contrast). For example, rearranging the buttons on a TV remote control, an umbrella with a fan, a bucket fitted with a torch, etc.,

Clause (g) – omitted
Agriculture or Horticulture Methods:

Agriculture and horticulture methods are not an invention under clause(h), the main intention of this provision is to prevent the patenting of traditional farming or gardening techniques, which are widely regarded as part of traditional knowledge and practices. The examples are as follows:

A method of producing a plant, even if it involved a modification of the conditions under which natural phenomena would pursue their inevitable course (ex: greenhouse);
A method of producing the improved soil from the soil with the nematodes by treating the soil with a preparation containing specified phosphorothioates;
A method of producing mushrooms or for the cultivation of algae. Etc.

Medical and Surgical Treatment Process of Human Beings and Animals:

Clause (i) prohibits the patenting of procedures for the treatment of humans or animals to cure them of disease or raise their commercial value. For example, a treatment method for cancer, a more efficient and less harmful dosage is known treatment, a method of reducing gastric secretion in mammals by the systemic administration of certain compounds was held to be a method of treatment of human ailment with a known substance and thus non-patentable, etc.

In Eli Lilly & Company’s Application[8], (1975) RPC 438, the court refused a patent claim for a method of purifying the blood by removing toxic substances in the blood by dialysis as it was considered as old chemical compounds, further supported its judgment by listing the following as not to be considered as inventions, namely: Medicinal methods such as a process of administering medicines orally or through injectables, or topically or through a dermal patch;

Surgical methods such as a stitch-free incision for cataract removal; Curative methods such as a method of cleaning plaque from teeth; Prophylactic methods such as a method of vaccination.

Diagnostic methods such as fitness tests, etc.

Plants, Animals and other Microorganisms:

Plants and animals, including their parts, are not patentable under clause(j). This includes seeds, varieties, and species, as well as the underlying biological processes for the production or propagation of plants and animals. However, it must be noted that microorganisms such for instance those genetically modified microbes can be patentable and thus are not included within the ambit of this clause.

Mathematical or Business Methods, Computer Programs, and Algorithms:

Clause(k) provides that mathematical or business procedures, computer programme, and algorithms as exclusions for patent protection. However, if these programmes are the combination of certain technical implementations that might give a technical solution or outcome to a problem, then it may be patentable. In the case of Telefonaktiebolaget LM Ericsson (Publ) v. Index Technologies (India) Limited[9], 2015 (62) PTC 90 (Del),p.182, the court held that any invention that has a technical contribution or has a technical effect and is not merely a computer program per se is patentable.

Literary, Artistic, or Aesthetic Works:

Clause(l) specifies that all those literary, dramatic, musical, artistic, and aesthetic works, encompassing film and television productions, fall outside the scope of patentable subject matter. Instead, these creations typically receive protection through copyright law.

Mere Schemes, Mental Acts, and Games:

Clause(m) excludes patents for abstract concepts such as plans, rules, methods of mental activities, or game-playing techniques. These activities, seen as integral to human intellectual and cultural progress, are not considered technical inventions within the scope of this provision.

A Presentation of Information:

Clause(n) clarifies that the presentation of information alone is not eligible for patent protection, these expressions or presentation of information may include any kind of visual, audible, or tangible methods by words, signals, symbols, diagrams, etc. For example, railway timetables, a 100-year calendar, etc. However, the innovations related to technical processes in generating or altering information may be patentable, but the information content itself is not within the scope of patentable subject matter.

Topography of Integrated Circuits:

As per clause(o), Integrated circuits which are crucial for the functionality of electronic devices like computers, smartphones, and televisions, fall outside patent eligibility due to their topography. The rationale behind this exclusion lies in considering these configurations as primarily oriented toward layout design, lacking the characteristics of a technical breakthrough.

Traditional knowledge:

The clause(p) denies patent eligibility for inventions that essentially amount to traditional knowledge or involve assembling and duplicating established properties of well-known components. It serves to prevent the granting of patents for innovations lacking novelty, a distinctive creative step, or substantial technological advancement. The legal framework acknowledges the imperative of safeguarding and honoring communal wisdom and cultural heritage by excluding traditional knowledge from patentability.

In the case of Dhanpat Seth v. Nil Kamal Plastic Crates Ltd.[10],2008 (36) PTC 123 (HP) (DB) at p. 127, the person seeking the patent for a particular device was challenged, and the single bench judge determined that the patented device was essentially a copy of the traditional Kilta. As a result, the judge dismissed the request for temporary protection.

CONCLUSION

In conclusion, understanding the boundaries of patent protection is crucial in navigating the complex landscape of intellectual property. The standards of patentability, including novelty, inventive steps, and industrial application, form the basis for determining whether an invention qualifies for patent protection. All these exclusions range from frivolous inventions contradicting natural laws to methods related to agriculture, horticulture, medical treatments, and more under Section 3 of the Act, emphasis on non-obviousness and industrial applicability ensures that patents contribute meaningfully to technological advancements which is the most important ingredient in the nation.

Ultimately, patent laws strike a delicate balance between encouraging innovation and also preventing the granting of patents for ideas contrary to public order, morality, or existing knowledge. This delicate balance safeguards communal wisdom, and cultural heritage, and ensures that patents granted align with the principles of novelty, non-obviousness, and industrial utility.

REFERENCES

BOOK – By VK Ahuja, Law Relating to Intellectual Property Rights, Page no – 476, published by LexisNexis, 2007.
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Article: Inventions Not Patentable in India, Webpage: www.Indiafilings.com, Date & Time: September 8, 2020, 5:44 pm, Link: https://www.indiafilings.com/learn/inventions-not-patentable-in-india/#:~:text=Any%20invention%20having%20a%20primary,for%20counterfeiting%20of%20currency%20notes
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Author: Rajnish Kumar Rai, Article: Patentable Subject Matter Requirements, Webpage: www.researchgate.net Chicago – Kent Journal of Intellectual Property2008-2009PDF.,Link:https://www.researchgate.net/publication/266684923_Patentable_subject_matter_requirements_An_evaluation_of_proposed_exclusions_to_India%27s_patent_law_in_light_of_India%27s_obligations_under_the_TRIPS_Agreement_and_options_for_India
Graham v. John Deere Co. of Kansas City, 383 US 1 (1966)
Indian Vacuum Brake Co. Ltd v. E.S. Luard, AIR 1926 Cal 152.
Young and Neilson v. Rosenthal & Co., (1884) 1 Pat. C. 1.
F. Hoffmann-la Roche Ltd v. Cipla Ltd., 2016 (65) PTC 1 (Del) (DB), p.15.
Novartis AG v. Union of India, 2013 (54) PTC 1 (SC) at pp. 76-77.
M/s. Stanipack Pvt. Ltd. v. M/s. Oswal Trading Co. Ltd., AIR 2000 Del 23.
Eli Lilly & Company’s Application, (1975) RPC 438.
Telefonaktiebolaget LM Ericsson (Publ) v. Index Technologies (India) Limited, 2015 (62) PTC 90 (Del),p.182.
Dhanpat Seth v. Nil Kamal Plastic Crates Ltd.,2008 (36) PTC 123 (HP) (DB) at p. 127.

[1] Graham v. John Deere Co. of Kansas City, 383 US 1 (1966)

[2] Indian Vacuum Brake Co. Ltd v. E.S. Luard, AIR 1926 Cal 152.

[3] Young and Neilson v. Rosenthal & Co., (1884) 1 Pat. C. 1.

[4] F. Hoffmann-la Roche Ltd v. Cipla Ltd., 2016 (65) PTC 1 (Del) (DB), p.15.

[5] F. Hoffmann-la Roche Ltd v. Cipla Ltd., 2016 (65) PTC 1 (Del) (DB), p.15.

[6] Novartis AG v. Union of India, 2013 (54) PTC 1 (SC) at pp. 76-77.

[7] M/s. Stanipack Pvt. Ltd. v. M/s. Oswal Trading Co. Ltd., AIR 2000 Del 23.

[8] Eli Lilly & Company’s Application, (1975) RPC 438.

[9] Telefonaktiebolaget LM Ericsson (Publ) v. Index Technologies (India) Limited, 2015 (62) PTC 90 (Del),p.182.

[10] Dhanpat Seth v. Nil Kamal Plastic Crates Ltd.,2008 (36) PTC 123 (HP) (DB) at p. 127.

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