The First Step Towards Patentability Law European Essay

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02 Nov 2017

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INTELLECTUAL PROPERTY RIGHTS-II

PROJECT ON �A CRITICAL STUDY OF SUBSTANTIVE

PATENT LAW IN INDIAN CONTEXT�

SUBMITTED BY:-

GROUP 8 B.B.A LL.B

ANSHUL AGRAWAL

2010/B.B.A L.L.B (H)/009

ARBAAZ HUSSAIN

2010/B.B.A LL.B(H)/012

TABLE OF CONTENTS

PATENTABILITY- AN INNOVATIVE APPROACH ...............................................................................4

1. NOVELTY- THE FIRST STEP TOWARDS PATENTABILITY ............................................................6

1.1. What are the criteria of �Novelty�? ..............................................................................6

1.1.1. �State of the Art�- The Basic test of Novelty ..........................................................6

1.1.2 �Anticipation� of the invention- The Subsequent Test ............................................8

1.1.3. �Prior Publication�- Was it already available? .......................................................9

1.1.4. �Prior User� - Has someone already used it? ....................................................... 10

1.2. Novelty �Provisions� in India- Are they adequate enough?......................................... 10

2. INVENTIVE STEP- THE SECOND TEST TOWARDS PATENTABILITY .......................................... 11

2.1. What is �inventive step�?............................................................................................ 11

2.2. Criteria for judging the �inventive step� ..................................................................... 11

2.2.1. Is the invention �obvious� in nature?....................................................................... 13

2.3. Inventive step �Provisions� in India- Are they adequate enough? ............................... 15

3. UTILITY / INDUSTRIAL APPLICATION- ANOTHER CRITERION TO JUDGE PATENTABILITY OF AN

INVENTION ................................................................................................................................. 15

3.1. Is the invention �useful�? ........................................................................................... 15

3.2. Criteria for judging �utility�? ..................................................................................... 16

3.3. Industrial Application in India- a grey test of patentability .......................................... 17

4. THOUGH INVENTIONS: STILL NOT PATENTABLE !! ................................................................ 17

4.1. Frivolous inventions: Not patentable ........................................................................... 18

4.2. Contrary to �ordre public� or morality: Not patentable .............................................. 18

4.3. �Discovery�: Not patentable....................................................................................... 18

4.4. Sec.3(d): No efficacy, Not patentable .......................................................................... 19

4.5. Composition having sum properties: Not patentable ................................................... 20

4.6. Juxtaposition of features: Not patentable .................................................................... 20

4.7. Method of treatment: Not patentable ........................................................................... 20

4.8. No patent on plants, animals, etc. but �micro-organisms� .......................................... 21

4.9. Atomic Energy: Not patentable ................................................................................... 21

4.10. Non-patentable subject-matter �provisions� in India- Are they adequate enough? .. 22

CONCLUSION ............................................................................................................................. 23

BIBLIOGRAPHY .......................................................................................................................... 24

ARTICLES .............................................................................................................................. 24

BOOKS ................................................................................................................................... 25

CASES .................................................................................................................................... 25

JOURNALS .............................................................................................................................. 27

OTHER DOCUMENTS ............................................................................................................... 28

STATUTES .............................................................................................................................. 28

WEBSITES .............................................................................................................................. 28

PATENTABILITY- AN INNOVATIVE APPROACH

The word �Patent. signifies a monopoly right to the inventor in respect of the invention.1 A

patent is an exclusive right granted to the person who is the inventor of an article or process or an

improver of the existing article.2 A patent was earlier referred to as an �Industrial Property.

which is modernly called as �Intellectual Property.. The owner of such property is the sole dealer

of the whole or part of such property. He may also authorize others to use or commercially

exploit it.3

1 35, Halsbury Laws of England, �303. (4th ed.).

2 P. Narayanan, Patent Law, 1 (4th ed. 2006).

3 31, Andrew Evans, Taming the Counterfeit Dragon: The WTO, TRIPS and Chinese Amendments to Intellectual

Property Laws, GA. J. INT'L & COMP L. 587 at 597 (2003).

4 History of Indian Patent System, INTELL. PROP. India, available at http://www.ipindia.nic.in/ipr/

PatentHistory.htm (last visited Feb. 10, 2012).

5 World Trade Organization, Intellectual Property, Overview: the TRIPS Agreement, available at

http://www.wto.org/english/tratope/trips-e/intel2_e.htm (last visited Mar. 2, 2012).

6 P. Narayanan, Patent Law, 2-3 (4th ed. 2006).

7 Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511 at 517.

The philosophical argument behind patent law is the desirability of public interest that industrial

techniques should be improved and in order to encourage the improvements and the disclosure of

improvements in a manufactured article,4 or in machinery or in methods of production, patent

law was devised in order to give monopoly to the person creating it for a period of twenty years

and after the completion of these twenty years it passes into the public domain.5 Furthermore, the

giving of monopoly is a motivating factor for the inventor as it is the only way by which he can

earn profit by putting it into practice by using it himself or by deriving an advantage over his

competitors by its use.6

Patent Law is objected towards the encouragement of scientific research, new technology and

industrial progress. Exclusive privilege is granted for a limited period for using or selling a

product or method to stimulate new inventions of commercial utility.7

�The fundamental principle of Patent Law is that a patent is granted only for an invention

which must be new and useful. That is to say, it must have novelty and utility. It is essential

for the validity of a patent that it must be the inventor's own discovery as opposed to mere

verification of what was, already known before the date of the patent.�8

8 Id.

9 Karnika Seth, History and Evolution of Patent Law � International & National Perspectives, Seth Associates,

available at http://www.sethassociates.com/wp-content/uploads/history-and-evolution-of-patents.pdf.

10 S.1, The Patents Act (1970).

11 S.3, The Patents Act (1970).

12 S.2 (j), The Patents Act (1970).

13 AIR 1978 Del 1.

Patent Law in India owes its existence to the two committees headed by the Justice Bakshi Tek

Chand and N. Rajagopala Ayengar. On 20th April 1972 Indian Patents Act, 1970 came into force

which was later amended thrice in 1999, 2002 and 2005. These amendments were made in order

to bring the Indian Act in consonance with the TRIPS agreement.9

A patent law is barred to have an extra territorial application. A domestic law of one country

cannot give effect to the enforcement of the patent rights in another country unless the patent is

registered under the domestic law of other country. For instance, Indian patent law is also

applicable only to the extent of the territorial limits of India.10

Under Indian Law, Substantive Patent Law is the �inventive matter� which is competent of grant

of patent through passing the various tests of Novelty, Inventive Step and Industrial Application.

But also, not every matter qualifying these qualities is patentable and also certain matters/articles

are treated as non-patentable due to their special characteristics.11 This inventive matter referred

here, is the �invention� under Indian Patent law and is defined as:

�A new product or process involving an inventive step and capable of industrial

application.� 12

In Raj Parkash v. Mangat Ram Choudhary,13 it was held that

�Invention as is well known is to find out something which is not found by anyone

before� it is not necessary that the invention should be anything complicated. The

essential thing is that the inventor was the first to adopt it. The principle, therefore, is that

every simple invention that is claimed so long as it is something which is novel or new, it

would be an invention...�

This paper tends to focus on the substantive aspects of patent law in Indian Context. Through

this paper, we will be analyzing the major provisions under the Indian Patents Act, 1970. Our

main focus will be on the criteria for patentability and we will attempt to give the technical

aspects of the same. We will be focusing on various case laws in Indian context and the

settled law regarding various tests to judge patentability. Also, a critical aspect will be

flowing with every criteria and this will be particularly in regard to the Indian Patents Act,

1970. Lastly, we will be focusing on the non-patentable subject matter i.e. on S. 3 & 4 of the

Act. Through this we will be covering the much debated issued of S. 3(d) with reference to

pharmaceutical sector and MNC.s. The research methodology followed in the entire paper is

secondary in nature.

1. NOVELTY- THE FIRST STEP TOWARDS PATENTABILITY

1.1.What are the criteria of �Novelty�?

�Novelty� is the fundamental requirement for invention to secure a valid patent. It is

interesting to note here that novelty cannot be proved or established rather its absence has to

be proved or established. The reason being it makes no sense to grant someone a legal right

on a particular thing which is already established or is in public domain.14 Therefore, a patent

is granted on something which is novel (unless statutorily prohibited or new).

14 12, Nathan Stacy, The Efficacy and Fairness of Current Sanctions in Effecting Stronger Patent Rights in

Developing Countries, TULSA J. COMP. & INT'L. L. 263, 279-80 (2004).

15 Robert H. Hu, Research Guide to Chinese Patent Law and Practice, at app. 3 (2002).

1.1.1. �State of the Art�- The Basic test of Novelty

Novelty has to be determined considering the knowledge available anywhere in the world on

the date of filing of the patent application.15 The basic definition of novelty depends on the

question of what matter to be regarded as not forming the �state of the art�.

�The state of the art in the case of an invention shall be 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 the invention been made available to the public (anywhere

in the world) by written or oral description, by use or any other way.�16

16 S. 2(2), UK Patents Act (1977).

17 P. Narayanan, Patent Law, 372 (4th ed. 2006).

18 Merell Dow v. Norton, [1994] RPC 1 at 10, 13.

19 N. R. Subbaram, Patent Law Practices & Procedures, 41 (2nd ed. 2007).

20 Id at 42.

21 Manual of Patent Practice and Procedure, The Patent Office, India, 7 (2005), available at

http://www.patentoffice.nic.in/ipr/patent/manual-2052005.pdf.

22 P. Narayanan, Intellectual Property Law, 79 (3rd ed. 2011).

23 AIR 1953 Nag 154.

The term �matter� used in the above quoted definition, must consist of clear, unequivocal and

unmistakable directions which enable the public to produce the claimed product.17 The fact

that the public is not aware about the existence of such matter is irrelevant in such cases as it

had still formed the part of the state of the art.18

State of the art and prior art are treated synonymously as prior art denotes the total

comprehensive knowledge that existed prior to the filing of or priority date of the patent

application on the relevant subject.19 The knowledge of an invention in order to be considered

as relevant prior art should satisfy anyone of the following conditions:20

i. The description of invention should be published in writing or document or in any

other tangible form.

ii. The description of the invention should be publicly spoken, such a disclosure is

known as oral disclosure.

iii. By using the invention in public or by putting it in such a manner that it is

accessible to public at large.21

The importation into India of a product made abroad by a patented process will constitute

knowledge or use in India of the invention on the date of importation except where such

importation was made for the purpose of reasonable trial or experiment.22

It was held in Bombay Agarwal Co. v. Ramchand Diwanchand23 that subject-matter of patent,

means the exact advance upon the existing knowledge which the patentee claims. The patent

can be defeated if it is not �a new manufacture or improvement, thereby indicating that qua

manufacture it was being indulged in by others prior to the date of this patent.�24

24 Id at �8.

25 S.23, Indian Patents (Amendment) Act (2005).

26 General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., [1972] RPC 457 at 485.

27 Schroeder v. Owens- Corning Fibeglas Corpn., 185 USPQ 723 (9th Cir 1975).

28 Shanklin Corpn. v. Springfield Photo Mount Co., 521 F 2d 609.

29 Stahlwerk Becker.s Patent, [1919] 36 RPC 13.

30 [1963] RPC 61.

31 Fomento Industrial SA Biro Swan Ltd. v. Mentmore Manufacturing Co., [1956] RPC 87.

32 Quantel Ltd. v. Spaceward Microsystems Ltd., [1990] RPC 83.

S. 64 of the Indian patent act talks about the revocation of the patent on the grounds of it

being not novel. The Indian Patents (Amendment) Act 2005, states that after an application

for a patent has been published and before the grant of a patent, the grant of patent may be

opposed on the ground of novelty.25

1.1.2 �Anticipation� of the invention- The Subsequent Test

�Anticipation. is the word commonly used to assess the impact of the prior state of the art on

the later invention in order to determine that whether the operation of the prior product or

process forestalls the later patent.26 To anticipate a claim for patent, a single prior source must

contain all its essential elements. An invention is said to be anticipated only if another

invention already known or used is identical in substance.27 A prior art reference must

disclose all the elements of the claimed inventions or their equivalents functioning in

essentially the same manner.28 Prior use can demolish novelty if it discharges information in

the same manner that a publication would do- that is, a skilled worker must be able to realize

and reproduce the invention through observation and analysis of the use.29 In Van Der Lily

(C) NV v. Bamfords30, a photograph of hay rake machine was sufficient enough to reveal the

intention of the photographed object to an informed person and thus it was held that such

photograph anticipated the patent application for a hay rake machine.

It is a settled law that relatively minor acts are sufficient to anticipate, but more may be

needed because the anticipation has to be of the invention itself.31 Moreover, anticipation

requires enabling disclosure and this enabling disclosure had to provide clear and

unmistakable directions to its addressee.32 For there to be anticipation, the common general

knowledge should allow the skilled person to select or secure the starting material or to make

intermediate products.33 Anticipation cannot be avoided merely because an element is

undisclosed in a prior art reference.34

33 Asahi Kasei Kogyo KK.s Application, [1991] RPC 485, see also Biogen Inc. v. Medeva plc, [1997] RPC 1.

34 Schering Corpn. v. Geneva Pharmaceuticals Inc., 339 F 3d 137 (Fed Cir 2003).

35 Glaverbd v. British Coal Corp., [1994] RPC 443 at 504-506.

36 P. Narayanan, Intellectual Property Law, 79 (3rd ed. 2011).

37 Genentech.s Patent, [1989] RPC 147 at 204.

38 AIR 1986 SC 712 at �5.

39 Id at �6.

1.1.3. �Prior Publication�- Was it already available?

A comparison between the claims made by the patentee and prior publication should be done

in order to check whether the information provided in the prior document is equal in practice

to that imparted in patentee.s claim.35 Mere publication is not sufficient to establish public

knowledge. Rather it is important that a thing must be publicly known even though not

published in a document. The publication must be such that the person to whom the

information is communicated must be free to use it as they please which includes freedom to

communicate the information to others.36 The �public. here refers to the workmen ordinarily

skilled in the particular art. It is the class of the persons to whom the specification is

addressed.

Publication does not depend either upon anything in the nature of a dedication to the public or

upon the degree of dissemination of the information alleged to have been published. It is

sufficient if the information is made available to the public. The information must have been

available to atleast one member of the public who was free in law and equity, to use it.37

In the case of Monsanto Co. v. Coramandal Indag Products (P) Ltd.,38 it was held that to

satisfy the requirement of being publicly known it is not necessary that it should be widely

used to be knowledge of the consumer public. As per the court it is sufficient if it is known to

the persons who are engaged in the pursuit of knowledge of the patented product or process,

either as man of science or man of commerce, consumers.39

In the present law, publication for the invention not only in India but anywhere in the world

may be considered for determining novelty. 40 But, a mosaic of publications from which he

invention could be extracted by studying, collating and applying a number of facts spread

over various publications would not be sufficient to invalidate a patent.41

40 P. Narayanan, Intellectual Property Law, 81 (3rd ed. 2011).

41 J. Mitra and Co. Pvt. Ltd. v. Kesar Medicaments and Anr., 2008 (36) PTC 568 Del.

42 Kalyan C. Kankanala, Arun K. Narasani & Vinita Radhakrishnan, Indian Patent Law and Practice, Oxford

Publications, 32 (2010).

43 M.B. Rao & Manjula Guru, Patent Law in India, Wolters Kluwer, 71 (2010).

44 Id.

Novelty of an invention is determined in the light of a single prior art, reference and various

prior art references cannot be combined for analyzing novelty. In order to anticipate an

invention all element of the invention must be present in a single prior art reference. Though

the elements are not directly present, they may be inherently present in the prior art reference.

Novelty analysis must be made by comparing elements in the prior art with that of the

invention, element by element.42

1.1.4. �Prior User� - Has someone already used it?

The novelty requirement in patent grant ensures that a patented invention has not been done

before, i.e. the invention is not covered by prior art. It predicates that the public is not already

in possession of the invention. As long as the whole invention is not found in a single device

or described in a single publication in existence before the invention.s creation, the invention

is considered novel.43

Patent protection is granted only if the public is not already in the knowledge of the invention.

However, novelty does not concern itself with how much of an advance over the current are

the invention embodies. Whether the invention involves any significant scientific advance is a

matter dependent on other criteria of patentability. Whether the invention is obvious and that

is different while considering whether there is novelty in the invention.44

1.2. Novelty �Provisions� in India- Are they adequate enough?

Earlier the Patents Act, involved determining if an invention is anticipated or not by way of prior

publication, prior public knowledge or prior working. While these tests are still continuing, a

new definition was introduced in 2005 defining a �new invention.. This definition makes the

novelty condition absolute and not relative in the Indian Territory with regard to anticipation by

prior public working. In addition, the phrase � �the subject matter has not fallen in the public

domain or that it does not form part of the state of the art� aims at applying the maximum

possible standard of novelty to an invention for which a patent application is filed.

The definition of patent uses the term �invention.45, as opposed to a �new invention.46, thus

amounting to disparagement between the two legal provisions, resulting in widening the ambit of

criteria of patentability. Therefore, this addition of new definition through the 2005 amendment

defeats the object and purpose of the term �invention..47

45 S. 2 (1) (j), Patents Act (1970).

46 S. 2(1) (l), Patents Act (1970).

47 Elizabeth Engdahl, India Alters Patent Views: The New Law Looks More Innovation Friendly and Mostly TRIPS-

Compliant, LEGAL TIMES 56 at 58 (11th July 2005).

48 D.K. Nauriyal, TRIPS-Compliant New Patents Act and Indian Pharmaceutical Sector: Directions in Strategy

and R & D, INDIANJ. ECON. & Bus., 189 (2006).

2. INVENTIVE STEP- THE SECOND TEST TOWARDS PATENTABILITY

2.1. What is �inventive step�?

Inventive step is considered to be the toughest and ambiguous criteria for qualification of

patentability. An invention is required to possess an inventive step in order to be eligible for

grant of patent. Under s. 2 (1) (ja), two conditions are needed to be satisfied to qualify as being

involving an inventive step. Firstly, the invention should be technically advanced in the light of

the prior art or should have economic significance or both. And secondly, the invention should

be non-obvious to a person having ordinary skill in the art in the light of prior art.48 Whereas, the

Act is silent as to what will constitute �technical advancement or economic significance. and also

do not provide any guidelines so as to determine the non obviousness of the invention from the

point of view of the ordinarily skilled person in the art.

2.2. Criteria for judging the �inventive step�

Determination of novelty and an inventive step is a mixed question of law and fact.49 The

application of an old device to an invention will be novel if it results in removal of earlier

difficulty if such an adoption involved ingenuity.50 In India the following steps are followed

to analyse or determine the inventive step:

49 Biswahanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511 at �69.

50 Bajaj Auto Ltd. v. TVS motor Co. Ltd., CIVIL APPEAL No. 6309 of 2009 (Arising out of S.L.P.(C) No.13933 of

2009).

51 Draft Manual of Patent Practice and Procedure, The Patent Office, India, �3.14.1 (2008).

52 Biswahanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511 at �21.

53 Id at �27.

54 Garware Wall Ropes Ltd. v. Mr. Anant Kanoi and Ors., 2006 (TLS) 216.

55 Bilcare ltd. v. Amartara Pvt. Ltd., MIPR 2007 (2) 42 at �55.

a. Determining scope and content of the prior art to which the invention pertains;

b. Assessing the technical result (or effect) and economic value achieved by the

claimed invention;

c. Assessing differences between the relevant prior art and the claimed invention

d. Defining the technical problem to be solved as the object of the invention to

achieve the result.

e. Final determination of non-obviousness, which is made by deciding whether a

person of ordinary skill could bridge the differences between the relevant prior art

and the claims at issue.51

It is a settled law that the improvement or the combination must produce a new result or a new

article or a better article than what already existed, to be patented.52 It has also been laid down

that an invention must not be the �obvious or natural suggestion of what was previously known

and if a person was able to make the invention based on the knowledge existing on the priority

date, the invention would lack inventive step.53

An invention should be more than a workshop improvement and should be outside the

probability of a craftsman in order to have an inventive step.54 If the invention is the near

combination of various elements existing in different prior art references and such a combination

does not require any exercise of inventive faculty, it is not novel and will lack inventive step.55

2.2.1. Is the invention �obvious� in nature?

The word �obvious. is an ordinary English word and does not have in patent law any technical

meaning. It means something which lies in the way, and is used in its normal sense of

something which is plain or open to the eye or mind, something which is perfectly evident to

a person thinking on the subject. Not everything that is new is inventive,56 and a thing may be

old without being obvious.57

56 Gadd and Mason v. Manchester Corp. (1892) 67 LT 569 at 578.

57 Sacharin Corp. Ltd. v. Anglo Continental Chemical Works, [1900] 17 RPC 307 at 315.

58 PLG Research Ltd. v. Ardon International Ltd,, [1995] RPC 116 (CA).

59 General Tyre v. Firestone Tyre, [1972] RPC 457.

60 Press Metal Corp. Ltd. v. Noshir Sorabji Poch Khanawalla, AIR 1983 Bom 144.

61 Farbewerke Hoechst v. Unichem Laboratories, AIR 1969 Bom 255.

62 F. Hoffmen La Roche ltd. and Anr. v. Cipla Ltd., 2009(40)PTC125(Del).

The philosophy behind the doctrine of obviousness is that the public must not be prevented

from doing anything which was merely an obvious extension or workshop, variation of what

was already known at the priority date.58 Obviousness must not be assessed in the light of

carefully selected pieces of prior art alone.59

The test is whether what is claimed is so obvious that it could at once occur to anyone

acquainted with the subject and desirous of accomplishing the end. To determine non-

obviousness of an invention the prior art references may be combined from the point of view

of the person skilled in the art.60 If a person skilled in the art can combine prior art references

to make the invention without exercising any inventive faculty or imagination, then the

invention would be obvious. If the problem solved by such invention is obvious to the person

skilled in the art then invention will tend to become obvious.

To answer the question of obviousness it has to be determined that �whether for practical

purposes, it was 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?�61

In the case of F. Hoffmen La Roche62 the court laid down the test of obviousness as to determine

whether in the light of prior art, it was possible for a normal but unimaginative person skilled in

the art to discern the inventive step of the invention on the basis of general common knowledge

of the art at the priority date and also whether the differences between the prior art would,

without knowledge of the alleged invention, constitute steps which could have been obvious to

the skilled man or whether they required any degree of invention.63 The court further stated that

the inventive step should be something that could not have been discernable to the unimaginative

person skilled in the art and not something which was published in the prior art.64

63 Id at �24.

64 Id at �25.

65 P. Narayanan, Intellectual Property Law, 84 (3rd ed. 2011).

66 383 U.S. 1, 17-18 (1966).

67 43 F. 2d 588 (7th Cir. 1976).

An inventor may well arrive at his invention by a flash of genius which causes him no

difficulty or concentrated thought at all, but the invention may still be a most brilliant one

which would never have occurred to the notional skilled reader in the art at all or after

prolonged investigation and the concentrated exercise of his, perhaps lesser, inventive faculty.

In such a case, though it is in a sense obvious to the inventor, nevertheless the invention may

be worthy of patent protection.65

The question of obviousness is ultimately one for the court and not for the witnesses though

undoubtedly the evidence of the witnesses may help the court to arrive at its decision. It must

be decided objectively by taking into account all the relevant circumstances of the case.

2.2.1.1 Graham.s Test - To judge the obviousness

To determine the basic standards of obviousness the U.S. Supreme Court, in Graham v. John

Deere Co66, laid down a four pronged test (Graham test) which are the following:

� The scope and content of the prior art.

� The structural similarity between the prior art and the claimed invention.

� Indication of non-obviousness and commercial success.

� The level of ordinary skill in the pertinent art.

This test later resulted in the synergism of the existing product thereby produced a synergistic

effect effect in the Burland v. Trippe Manufacturing Co.67 but later this test was affirmed by the

Supreme Court. Graham�s test still holds valid and is also applicable in India to determine non-

obviousness.68

68 K.D. Raju, Interpretation Of Section 3(D) In The Indian Patents Act 2005: A Case Study Of Novartis, [2008]

INJlIPLaw 2, also available at http://www.commonlii.org/in/journals/INJlIPLaw/2008/2.html.

69 China's WTO Achievements Recognized, CHINA DAILY, (15th Dec. 2005).

70See http://www.european-patent-office.org/ legal/gui_lines/e/c_iv_9_10_4.htm.

71 11, Louis Sorell, A Comparative Analysis of Selected Aspects of Patent Law in China and the United States, PAc.

RIM. L. & POL'Y J. 319 at 336 (2002).

72 40.16, A Confusing Patent Law for India, Economic and Political Weekly, 1576-1579 (Apr. 16-22, 2005).

2.3. Inventive step �Provisions� in India- Are they adequate enough?

It is not settled if the classical test of inventive step will have preference over the newly

introduced test of �economic significance.. The examiner of patents cannot be prevented from

conducting first the economic significance enquiry and then proceeding to ascertain if the

invention passes the test of non-obviousness. The other aspect of the definition - �technical

advance as compared to the existing knowledge. and its application in an inventive step enquiry

is yet to be explained in the context of examination of a patent application or a judicial scrutiny

of the validity of a granted patent.

More significantly, the 2005 amendment changed the definition of 'inventive step', from the

commonly accepted definition of "not obvious to a person skilled in the art" by adding that a

feature of the invention that involves either a technical advance or having economic significance

or both also meets the standard of inventive step. It is quiet unlikely that economic significance

is a factor included in any other patent legislation and moreover, is also contentious in many

jurisdictions.69 A perusal of the detailed guidelines of the European Patent Office for patent

examiners, available on its web site,70 makes it clear that commercial success can be used as an

indicator of inventive step only where such success is attributable to the technical features of the

invention.71 These definitions of novelty and inventive step appear to go in favor of patent

applicants who would like the bar on patentability to be lowered so that even inventions that are

not truly novel or inventive can slip past the patent examination process.72

3. UTILITY / INDUSTRIAL APPLICATION- ANOTHER CRITERION TO JUDGE

PATENTABILITY OF AN INVENTION

3.1. Is the invention �useful�?

One of the essential requirements of patentability is the condition that it should be useful in

nature but the criteria to determine the usefulness of any invention has not been defined. S.

2(1) (j) of the Patent Act says that a new product or process which involves an inventive step

if is capable of industrial application then it can be considered as invention. Now, at this

juncture it is necessary to identify what kind of inventions would be considered to be capable

of industrial application. S. 4 (1) of the U.K. Patents Act, 1977 states that �An invention shall

be taken to be capable of industrial application if it can be made or used in any kind of

industry��

3.2. Criteria for judging �utility�?

The criteria of �utility. should be judged with reference to state of things at the date of the

patent. Utility is a portion of degree, and always has reference to some object. �Utility for

what. is a question which must be always asked, and the answer must be useful for purposes

indicated by the patentee. It is important to note here that commercial success or failure has

no relevance in judging the question of utility of a patent. The recognized rule is that the

utility of an invention depends upon whether, by following the directions of the patentee, the

result professed to be produced may in fact be produced.73

73 Terrel on the law of Patents, 98 �248 (11th ed.).

74 Edison and Swan Electric Light v. Holland, [1889] 6 RPC 243 at 283.

75 Farbwerke Hoechst AG Meister Lucius & Bruning Corp. v. Unichem Laboratories, AIR 1969 Bom 255; See also

Laxmi Dutt v. Nankau, AIR 1964 All 27 at 33.

Subsequent improvements rendering the invention obsolete or commercially of no value,

cannot be considered as useless if on the date of the patent the invention was useful.74 The

practical usefulness or commercial utility of the invention does not matter, nor does it matter

whether the invention is of any real benefit to the public, or particularly suitable for the

purposes suggested. It is the only failure to produce the results promised that will invalidate

the patent, not misstatements as to the purposes to which such result might be applied.75 There

may be cases in which the result which the patentee claims to have produced can in fact be

produced, but the result produced cannot be applied to one or more of the purposes for which

the patentee claims that it can be applied. In such a case the patent may not necessarily be

void.76

76 29, Halsbury.s Laws of England, 59 �123 (3rd ed.).

77 AIR 1926 Cal 152.

78 AIR 1943 Lah 247.

79 Lane-Fox v. Kensington & Knightsbridge, [1892] 9 RPC 413 at 417.

In the case of Indian Vaccum Brake Co. Ltd. v. E. S. Luard,77 it was held that the term 'utility'

used in the Act has been used in a special sense. Mere usefulness is not sufficient to support

the patent. In the case of Vidya Prakash v. Shah Charan Singh78 the Lahore High Court held

that the points which are to be considered in the case of an infringement of a patent are

whether the invention had utility, whether it was or was not a new invention and whether the

invention was properly described in the specification.

The utility of an alleged invention depends not on whether by following the directions in the

complete specification all the results necessary for commercial success can be obtained, but

on whether by such directions the effects which the patentee profess to produce could be

produced. To judge the utility, the directions in the specifications must be followed and if the

result is that the object sought to be attained by the patentee can be attained, and is practically

useful at the time at which the patent is granted, the test of �utility. is satisfied.79

3.3. Industrial Application in India- a grey test of patentability

The amount of industrial application required to support a patent is very less. What kind of

invention can be applied industrially has not been defined anywhere in the statute which

makes it quite subjective to decide the utility of the patent. S. 2 (j) of the Patent Act only says

about the invention which can be industrially applied and is silent about how it can be

industrially applied which as a result is making it much more difficult to determine the

applicability of this test.

4. THOUGH INVENTIONS: STILL NOT PATENTABLE !!

It is not always the criteria that the inventions satisfying the criteria of patentability, i.e.,

novelty, inventive step and utility, are always patentable. In India sections 3 and 4 of the Act

stipulates those inventions for which patents cannot be secured though they fulfill all the

essential criteria of patentability. According to Art. 27 of the TRIPS the member countries are

not required to grant patents, if the commercial exploitation of such invention, is necessary to

protect public order (ordre public) or morality including to protect human, animal or plant life

or health or to avoid serious prejudice to environment.80 The implications of ordre public

were considered by courts in the case of Harvard Oncomouse.81 Furthermore, patent is not

required to be granted for following inventions:

80 Commission on Intellectual Property Task Force on TRIPS, Dept. of Policy and Business Practices, Initial Views

on the Post-Doha Agenda of the Council for TRIPS, (June 24, 2012), available at

http://www.wto.orgenglish/forums-e/ngo-e/icc-trips-e.do.

81 1991 EPOR 525.

82 S. 3 (a), Patents Act (1970).

83 AIR 1926 Cal 152.

84 S. 3 (b), Patents Act (1970).

85 Art. 53 (a), The European Patent Convention (1973).

i. Diagnostic, therapeutic and surgical methods for the treatment of humans and

animals.

ii. Plants and animals other than micro-organisms and essentially biological processes

for the production of plants and animals other than non-biological processes.

4.1. Frivolous inventions: Not patentable

Frivolous inventions and inventions which are in contravention to the natural laws are not

patentable.82 In the case of Indian Vacuum Break Co. Ltd. v. E.S. Luard83 it was held that

patent for making one piece articles which were formally prepared in two or more pieces

could not be called to be a valid patent and was frivolous.

4.2. Contrary to �ordre public� or morality: Not patentable

The inventions which are contrary to public order and morality are also non patentable.84 The

EPC states:

�Inventions, the commercial exploitation of which would be contrary to ordre public or

morality, such exploitation shall not be deemed to be so contrary nearly because it is

prohibited by law or regulation in some or all of the contracting states.�85

4.3. �Discovery�: Not patentable

A mere discovery is not a subject matter of the patent. Discovery adds to human knowledge,

but it does so only by lifting the veil and describing something which before had been unseen

or hazily seen.86 On the other hand inventions not only add to human knowledge but also

disclose something new which necessarily involves a suggestion of an act to be done.

Therefore, the mere discovery of a scientific principle or formulation of an abstract theory or

discovery of any living or non-living thing is not patentable.87 It is the practical conversion of

the idea or discovery which leads to patentable inventions and in order to convert the

discovery into patentable inventions the person must do something new intellectually which is

more than a mere finding.88

86 Renolds v. Hebert Smith, [1903] 20 RPC 123 at 126.

87 S. 3 (c), Patents Act (1970).

88 N. R. Subbaram, Patent Law Practices & Procedures, 78-79 (2nd ed. 2007).

89 S. 3 (d), Patents Act (1970).

90 97, Amy Kapczynski, Harmonization and Its Discontents: A Case Study of TRIPS Implementation in India's

Pharmaceutical Sector, CAL. L. REV., 1571 at 1579 (2009).

91 2.2, Rochelle Chodock, TRIPS: Transformation of the Indian Patent System and Its Effect on the Indian

Pharmaceutical Sector, ABA ScITECH L. 4 (2005).

92 Lionel Bentley & Brad Sherman, Intellectual Property Law, Oxford University Press, 379 (2001).

4.4. Sec.3(d): No efficacy, Not patentable

The mere discovery of a new form of known substance which does not result in the

enhancement of the known efficacy is not patentable.89 The finding out of a new property or a

mere new use of a known substance is not patentable. Similarly, finding a new use of a known

device or apparatus without any additional inventive ingenuity in the said machine or

apparatus is also not patentable invention.

The �explanation. given to s. 3 (d) of the Act signifies that if one desires to secure patent on a

derivative then it should contain detail substantiating information about the enhanced efficacy

of such derivative as compared to the original substance.90 In other words, the specification

should contain comparative data of the efficacies of the known substance and the derivative

concerned and established without any doubt the unexpected and unique characteristics of the

derivatives as compared to the original compound.91

If a person finds a new property of known material or article and puts the property to a

practical use the invention may be patentable.92 A new use of an old product unless there is

invention in the adaptation of the old product to the new use, is not patentable.93 Also, mere

instruction on the pack containing only old material cannot make the contents in the container

a manner of new manufacture and hence not patentable.94

93 Acetylene Illuminating Co. Ltd. v. United Alkali Co. Ltd., [1904] 22 RPC 145 at 147.

94 Id at 149.

95 Sanjeev Chowdhary, Remember the Mashelkar Panel Report, The Economic Times, 6 (27th July 2006).

96 S. 3 (e), Patents Act (1970).

97 N. R. Subbaram, Patent Law Practices & Procedures, 82 (2nd ed. 2007).

98 S. 3 (f), Patents Act (1970).

99 N. R. Subbaram, Patent Law Practices & Procedures, 83 (2nd ed. 2007).

There was seen to be a considerable pressure on the government especially by MNCs to

enlarge the scope of patentability u/s 3 (d). Also the Mashelkar report suggested a finding of

the ambit of what constitute patentable pharmaceutical substance, by allowing patent of slew

of structural and physical modification, incremental innovations, which the country.s patent

law currently denies.95

4.5. Composition having sum properties: Not patentable

A composition containing atleast two ingredients in which the ingredients interact one onother

resulting in a composition, having the sum properties of each of the ingredients is not

patentable.96 On the other hand, if their combination results in a composition having

synergistic effect namely, resulting in a composition having different and/or unexpected

properties as compared to the individual ingredients employed, such composition is

patentable. This is because; it is not known hitherto that such a combination has said

property.97

4.6. Juxtaposition of features: Not patentable

A mere juxtaposition of features of an already known device which has already been chosen

from among the number of different combination does not constitute a patentable invention.98

Similarly, when two or more features of an apparatus or a device are known and they are

juxtaposed without any interdependence of their functioning of the apparatus or device, it is

supposed to be already known and consequently has no inventive step and therefore not

patentable.99

4.7. Method of treatment: Not patentable

Method of treatment of a human body by surgery, curative or other methods is not an

invention and therefore is not patentable.100 Similarly a method of improving or changing the

appearance of human body or parts of it is also not a patentable invention.101 However, the

invention relating to the processes of synergistic medicine/drug/fertilizer or a advice for

performing the operation are patentable if they satisfy the three essential criteria as has been

dealt earlier in this paper.

100 S. 3 (i), Patents Act (1970).

101 Art. 27 (a), Trade Related Aspects of Intellectual Property (1995).

102 Elizabeth Verkey, Law of Patents, Eastern Book Company (2nd ed. 2012).

103 S. 3 (j), Patents Act (1970).

104 Rajkumar Dubey, Making it TRIPS Way - India's New Patent Regime, MONDAQ Bus. BRIEFING, (18th July

2005) available at 2005 WLNR 11268677.

105 447 U.S. 303 1980.

A method therefore does not become non- patentable if there is no functional link and no

physical causality between its constituent steps carried out in relation to therapy advice and

the therapeutic effect produced on the body by that device.102

4.8. No patent on plants, animals, etc. but �micro-organisms�

No patents can be granted for the plants or animals, parts of the plants or animals, seeds, plant

varieties, species and for essentially biological processes for the production or propagation of

animals or plants.103 It may be recalled here that TRIPS provisions mandates all the member

countries to provide protection for new micro-organisms. Accordingly s. 3(g) is in

consonance with the TRIPS provisions but the term micro-organisms has not been defined

anywhere in the act.104 The decision of the Supreme Court in Diamond v. Chakraborty105 held

that micro-organisms produced by genetic engineering are not excluded from patent

protection.

4.9. Atomic Energy: Not patentable

S.4 of the Patent Act stipulates that no patent shall be granted in respect of an invention

related to atomic energy falling within sub section (1) of s.20 of the Atomic Energy Act,

1962. The question as to whether or not an invention relates to atomic energy or not will be

decided by the Central Govt. It has been held that the question whether the opinion of the

Central Govt. under s.20 (1) of the Atomic Energy Act was properly arrived at or not, cannot

be the subject matter of an appeal under the act.

4.10. Non-patentable subject-matter �provisions� in India- Are they adequate

enough?

In case of pharmaceutical substances the most pertinent question is related to the increase,

�efficacy. rather than the new substance.106 The standard of �efficacy. is nowhere defined in

the Patent Act or the Rules. This is in a way harmful for a country which is vigorously

allowing more and more Foreign Direct Investment in the pharmaceutical sector107 with an

increasing level of patent protection.108

106 29, Merri C. Moken, Fake Pharmaceuticals: How They and Relevant Legislation or Lack Thereof Contribute to

Consistently High and Increasing Drug Prices, Am. J.L. & MED. 525, 525 (2003).

107 Tushar Poddar, Goldman Sachs & Eva Yi, India's Rising Growth Potential, Global Economics Paper, 4 (2007),

available at http://www.usindiafriendship.net/viewpointsl/IndiasRisingGrowthPotential.pdf.

108 India Set For Solid Growth in Pharmaceutical Industry, PwC Report, (1st Aug. 2005), available at 2005 WLNR

12162024.

109 Eric Bellman, India Senses Patent Appeal; Local Companies Envision Benefits in Stronger Protection, WALL

ST. J. (Eastern Ed.) (11th Apr. 2005)

110 99, Frederick M. Abbott, The WTO Medicines Decision: World Pharmaceutical Trade and the Protection of

Public Health, AM. J. INT'L. L. 317, 320 (2005).

111 41, Rajarshi Sen & Adarsh Ramanujan, Pruning the Evergreen Tree or Tripping up Over TRIPS?- Section 3(d)

of the Indian Patents Act, 1970, INT'L REV. INTELL. PROP. & COMPETITION L., 170 at 18(2010).

The object behind the amendment in 2005 was with the sole intention to wider the ambit or

scope of patenting. The legislator.s intention was to include discovery of a known substance

which has greater efficacy than the known substance.109 S. 3 (d) permits patenting of not only

the pharmaceutical products but also the new forms of known substances provided that they

have a higher standard of efficacy. Moreover, International law is silent on the definition of

efficacy.110 Also, the intention of the legislature can be construed as being preventing MNCs

from �ever greening. their patents through recombination of the known substances.111

CONCLUSION

Ten years time was given to India to comply with the provisions of TRIPS, almost 17 years have

been passed but still India is struggling to match up with the provisions of TRIPS. This is where

a developing country like India which is considered to be one of the fastest growing economies

stands in respect of Intellectual Property. The entire discussion in this paper starting through

novelty till non-patentable subject matter shows only one thing which is the broad nature of the

provisions to determine patentability. This is what we call the substantive patent law of India, on

the basis of which patentability criteria of any invention is determined. Through this paper

authors have realized that there are certain flaws in the law which is needed to be tackled quickly

in order to match up with the Patent laws of other nations. Firstly, the definition of �New

Invention� which was introduced in 2005 has further increased the ambit of criteria of

patentability making it more difficult to determine the novel character of an invention. Secondly,

the only provision which defines �Inventive Step� in the Patents Act has not given a clear cut

definition and has thereby left it again upon the judges to decide on the basis of facts and

circumstances of the case. Thirdly, the test of industrial application or utility to determine

patentability is silent in terms of how an invention can be applied industrially and thus making it

very difficult to assess patentability. Lastly, since the standard of �efficacy. as related to

pharmaceutical substances has not been defined in the statute the main purpose of non

patentability of certain inventions is losing its purpose as increasing level of protection is being

given to pharmaceutical substances.



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