Patentable and Non-Patentable Inventions of Patent Registration in India
Conditions of patentability – Patentable inventions
The TRIPS Agreement of the World Trade Organization laid down certain basic common features for granting patents; that are novelty, inventive step and utility. All these requirements: having their origin from The Paris Convention, vary within different countries. Basic conditions of patentable inventions are:
1. Novelty (New): Any invention is considered as new or novel only if the invention is never disclosed in the public in any way, anywhere or it does not form a state of art, before the filing of a patent application, If the invention is disclosed by a written or oral description or by use or in any other way before the filing date of the patent application it will lose its novelty.
2. Inventive step (Non-obvious): When attempting to patent an invention it requires that the invention should be a non-obvious improvement which is involves a technical advancement 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. An invention is considered as patent only if it involves one or more inventive step. A determination is made whether the inventive steps in the new invention would have been obvious to a person having ordinary skill in the type of technology used in the invention by comparing the invention to the prior art. To determine the patentability, an examiner first inquires about the novelty of the claimed invention and then continues the inquiry on whether the claimed invention is non-obvious or not.
3. Capable of industrial/ useful application (utility): For an invention to be patentable, it must be useful which means the invention of patent must have a useful purpose. For example in case of some chemicals, it is mandatory to specify its particular utility towards some preparation. If it seems that the invention would not hold any chance of commercialization, then it fails the litmus test of utility”.
Non-Patentable inventions
To be patentable the invention must fulfil the conditions of novelty, inventive step and utility with certain exceptions available to the member states within their territories. All the inventions which are incompatible to public health or morality or have the potential to cause harm to the public are included in the non-patentable inventions. The lists of inventions that are not patentable are given in Section 3 and Section 4 of the act.
1. Section 3 (a): Inventions which are frivolous or which claim anything obviously contrary to a well established natural law.
2. Section 3 (b): An invention, the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which could cause serious prejudice to human, animal or plant life or health or to the environment.
Explanation: Any kind of new invention, the usage of which is opposite to the law for the time being in force or use of which is prohibited, is not patentable. For example: Hacking a social account of an individual. Such an invention shall not be considered as patentable as it would cause serious disfavor to individuals. A patent for a method of adulteration of spices will also be excluded under the above provisions.
3. Section 3 (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.
Explanation: The 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 is not patentable. It cannot be considered as an invention, if above mentioned used with a process in production of a substance may be considered to be an invention. Discovery of any Iiving thing or non-living thing or scientific theory is a statement about the natural world therefore they are not consider as inventions, doesn’t matter in how beneficial insight they result, since they do not result in a product or process. For example: A known substance is found with unknown properties this is a discovery not an invention, but if this discovery leads to result that this substance can be used in some particular preparation then the substance is an invention.
4. 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 mere 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: Since the new form of known substance does not improve the efficacy of known substance it cannot considered as patentable because as it does not results in enhancement of the substance it is considered as the same substance. The new form of substance must result in different properties and in enhanced efficacy. For examples mixtures of two known salts are considered to be the same substance, unless or until they results in completely different properties.
5. Section 3(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.
Explanation: Consider a vaccine A’ (0 ml) that cures typhoid having a side effect of rashes on skin. The disease is not treated well if 3 ml of the vaccine (amount less than the therapeutic dosage) is given to a patient. Also consider a vaccine ‘B’ (6 ml) that help in treating pain and inflammation having a side effect of headache and the said vaccine does not work properly if 3 ml (again less than the therapeutic dosage) is given to the patient. If these two vaccines are combined together in the prescribed quantities, i.e., 6 ml each, this combination cures both, inflammation and typhoid while keeping the same side effects, any such kind of innovation will not be granted a patent registration in coimbatore since it does not produce any synergistic effect. On the other hand, if the two vaccines are combined together with a dosage amount 3 ml each and such assemblage has a synergistic effect and takes less time to treat the disease that too with a reduced or no side effects, then such a combination will qualify as a patentable subject matter.
6. Section 3(f): The mere arrangement or re-arrangement of duplication of known devices each functioning independently of one another in a known way.
Explanation: With the combination or improvement of already known different devices in a way that it should meet the requirements of inventive step to get a patent, but the combination or improvement must be done in such a way that it result in something new at low price as compared to existing one.
7. Section 3 (g): A method of testing
This section was earlier covered under non patentable inventions but after the amendment, this is now patentable. Hence a method of testing can now be patented.
8. Section 3 (h): A method of agriculture or horticulture.
Explanation: A plant grows naturally even if new methods or techniques are employed on its production, it will grow naturally in the soil following the process of photosynthesis, which is not patentable.
9. Section 3 (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.
Explanation: The above mentioned processes involves the skills and knowledge of surgeon or doctor like treatment of cardiovascular disease and embryo transplant is not patentable as it considered as a treatment of human beings. Subsequent to decision in Joos v. Commissioner of Patents, it was held that if any substance that is applied on the skin only for cosmetic purposes will considered as a patentable as it is not treatment of human being. On the other side, if any substance for the treatment of any disease or to prevent a disease shall be considered as a method of treatment therefore it cannot be considered as patentable.
10. Section 3 (j): Plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.
Explanation: Microorganisms may be patentable (other than the ones discovered from the nature), according to Patent Act. While any modified organism is held as patentable. The Act therefore tries to make discrimination between the subject matter which is a natural product and which is man-made.
11. Section 3 (k): A mathematical or business method or a computer program per se or algorithms.
12. Section 3 (1): A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions.
Explanation: All the words related to literary, drama, music or art ure subjected to copyright protection and therefore cannot be subject to patent protection.
13. Section 3 (m): A mere scheme or rule or method of performing mental act or method of playing game.
Explanation: Any scheme, method of performing mental act or method of playing chess (or any other game) is not patentable as the subject matter is just an idea. Ideas are not covered under patents, but in case an idea has an industrial application, it can be patented. [Section (1) (ac)].
14. Section 3 (n): A presentation of information.
Explanation: Presentation of information is other mode of expressing information by symbols, codes, visual, audible, tangible or by other means of representation, hence it is not patentable.
15. Section 3 (0): Topography of integrated circuits.
16. Section 3 (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: Section 4 of the Patents Act prohibits patenting of the inventions that fall under Section 20 (I) of the Atomic Energy Act, 1962, on the grounds of national security in public interest.