INTELLECTUAL PROPERTY LAW ASSIGNMENT

"PATENTABLE AND NON-PATENTABLE INVENTION UNDER THE

INDIAN PATENTS ACT, 1970"

INPARTIAL FULFILMENT OF B.A LL. B 5 YRS DEGREE COURSE

ARMY INSTITUTE OF LAW, SECTOR-68, MOHALI

SUBMITTED BY:
SUBMITTED TO: KANCHAN MEHRA
DR.BHUPINDER KAUR ROLL. NO. 1751
ASSIST.PROF. OF IPR

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 ACKNOWLEDGEMENT

I would like to give my special thanks of gratitude to my teacher Dr. Bhupinder

Kaur, who gave me the opportunity to do this wonderful project of Intellectual
Property Law on “Patentable & Non-patentable Invention under the Indian Patents
Act, 1970”, Who also helped me in completing my project. I came to know about
so many new things.

Secondly, I would like to thank my parents and friends who helped me a lot in
finalizing this project within the limited time frame.

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 CONTENTS

1. Introduction

2. Patentable Invention

3. Criteria for the Patentability

4. Non-patentable Inventions (Sec3)

 Causes (a) to (p) of sec 3

 Explanation,

 Examples and

 Case studies.

5. Atomic energy Invention are non-patentable (Sec 4)

6. Conclusion

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 "PATENTABLE AND NON-PATENTBLE INVENTION UNDER THE
INDIAN PATENTS ACT, 1970"

INTRODUCTION

According to the Patent Act, 1970 those that fall under the category of

“Inventions” can be patented, as defined in Section 2 (j) of the Act which involves
anything that is novel, capable of industrial application, and is not frivolous.
However, those that cannot satisfy such conditions are non-patentable as
mentioned in Section 3 and Section 4 of the Act.

PATENTABLE INVENTIONS

Meaning of Patent - S. 2 (1)(m) provides that Patent means 'a patent for any
invention granted under this Act'.1

In other words, Patent is an exclusive right granted by the sovereign of the state to
the owner of the invention to make, sale, use and manufacture the invention upon
complete disclosure of the invention, provided invention satisfies certain criteria
stipulated by law, for limited period of 20 years.

Indian Patent Office grants the patent, which are territorial in nature, which means,
there’s no concept like World patent. This Patent right allows the owner to say who
can’t use the invention.2

CRITERIA FOR THE PATENTABILITY

If the invention satisfy all three criteria, then only patent can be granted.
1
Section 2 (1) (m) of the Patents Act, 1970.
2
What is Patent? WIPO, (Last visited on Nov 1, 2021, 8:15 PM), https://www.wipo.int/patents/en/

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 1. Novelty (Invention/New-invention)

2. Non-obviousness (Inventive step)

3. Industrial application.3

Meaning of Invention - S. 2 (1)(j) provides that invention means 'a new product or process
involving an inventive step and capable of industrial application’.4

Meaning of New Invention - S. 2 (1)(l) provides that 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',5 i.e., the subject matter has not fallen in public domain or that it does not form part
of the state of the art.

New or Novel - On the date of the filing of patent application, it should not form a
part of the state of the art. This means that in order to be patentable, an invention
should not be found in any matter whether a product, a process etc. which has at
any time been made available to the public anywhere in world by any means. The
novelty or invention has to be succinctly stated in the claim.

In BPR Shyam v. Hindustan Metal Industries 6., it was held that, it is the fundamental
principle of patent law that a patent is granted only if there is an invention which has novelty and
utility. Whether an invention involve novelty and inventive step is a mixed question of law and
fact, depending largely on the facts of the case.

Inventive step (Section 2(ja)) means invention should show technical

advancement in comparison with the existing knowledge or having economic

3
Senthil Kumar, What can be Patented in India?, Mondaq, (Last visited on Non 1,2021, 8:21 PM),
https://www.mondaq.com/india/patent/526406/what-can-be-patented-in-india
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Section 2(1) (j) of the Indian Patents Act, 1970.
5
Section 2(2) (l) of the Indian Patents Act, 1970.
6
AIR 1982 SC 1444.

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significance or both and invention must not be obvious to a person skilled in the
art.

In CTR Manufacturing Industries Ltd. v. STE Prevention Technologies Pvt. Ltd, 2016., it
was held that, the degree of inventiveness is irrelevant. Slight improvements may yield
dramatically important results and might be the result of very great ingenuity.

Non-obviousness - In order to be patented, an invention needs to be non-obvious. If there is no

inventive step, it implies that it is obvious. Or it is not immediately apparent Or such as would
ordinarily be expected.7

Capable of Industrial application - It means that the invention is capable of

being made or used in an industry. It has been held in the case of F. Hoffman-La
Roche Ltd. v Cipla ltd.8 that S. 2(1)(ac) necessitates that an invention must have
commercial use or manifestation. Thus, it is not the product which is the focus of
attention but the actual physical substance created which has the potential of a
commercial manifestation.

NON-PATENTABLE INVENTIONS (SECTION 3-4)

Section 3 & 4 of the Indian Patents Act, 1970 provides a list of inventions, which
are not patentable under the Indian Law.

In F. Hoffmann-La Roche Ltd. v. Cipla Ltd 2008., it was held that, Section 3
outlines situations which may otherwise meet the tests of "invention" and
"inventive step" but still not be granted patents as a matter of policy.

According to section 3 following are not inventions within the meaning of this
Act :-

7
Non-obviousness, CornellLawSchool, (Last visited on Nov 2,2021,10:57 AM),
https://www.law.cornell.edu/wex/nonobviousness
8
Decided on 19 March 2008.

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(a) Inventions that are frivolous and contrary to natural laws are not Patentable.

For example :- A machine allegedly giving 100 % efficiency. A perpetual motion

machine of the first generation which claimed to produce work without energy input which is
contrary to law of thermodynamics (law of conservation of energy - energy can be neither
created nor destroyed. It simply changes from one form to another).

Case study- In 2002,A Patentee filed an application for patent of “Gravity wheel–a perpetual
motion machine”. This invention claimed to produce a powder delivery wheel, which is a
perpetual motion machine working by gravitational force. This machine was claimed to be never
stopped except human means. The claimed machine was a stationary engine of the unlimited size
which was capable of continuous power output from gravity force and the gravity force can be
universally available in any planet. The patent was rejected on the ground of Section 3(a) as its
performance was contrary to the law of thermodynamics. 

b) Inventions, the intended use of which could be contrary to public order or

morality (that is against the accepted norms of the society and is punishable as a
crime) or which causes serious prejudice to human, animal or plant life or health or
to the environment.

For example :-

1. The Oncomouse, genetically modified to develop cancer for the purposes of

medical research is not patentable because cancer can be transmitted to the
public.

2. Any device or method for committing theft or burglary.

3. Any machine or method for counterfeiting of currency notes,

4. Any device or method for gambling,

5. An invention or method for cloning of humans.

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 6. A method for adulteration of foods.

7. Any method for termination of the germination of a seed by inserting a gene sequence
that could lead to the disappearance of butterflies,

8. Any method of bioterrorism.

Case study- In 2007, A Patentee filed an application for patent of electro-mechanical sexual
stimulation device. This patent deals with sexual stimulating vibrator and its intended use is
contrary to public morality hence the patent was rejected based on ground Section 3(b).

(c) Inventions that are a mere discovery of something that already exists in nature
or the formulation of an abstract theory or discovery of any living or non-living
substances occurring in nature.

For Example: Newton’s Laws, Discovery of micro-organism, Raman effect and

Theory of Relativity.

Case study- In 2008, Patent application for Gene family (LBLF313) associated with
pancreatic cancer was filed. The invention relates generally to the changes in gene expression
in human pancreatic adenocarcinoma & specifically, to a human gene family which is
differentially expressed in cancerous pancreatic tissues compared to corresponding non-
cancerous pancreatic tissues. The objections are raised that the applicant used 777 base pairs and
in prior art it was 764 base pairs. The applicant does not show any advantages due to these extra
13 nucleotide base pairs. As a result, the Applicant faxed letter that he’s not interested in
pursuing this application further. Considering the same, the application was refused for grant of a
patent

Bilski V. Kappos,9 This case deals with the Patentability of a business method. In this case,
Bilski and Warsaw applied for the patent on hedging risks on commodities trading but their
patent got rejected by the US Supreme Court on grounds that an abstract idea cannot be patented.

9
Bilski v. Kappos – 561 U.S. 593, 130 S. Ct. 3218 (2010).

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(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 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.10

However, if the discovery leads to the conclusion that the material can be used for making a
particular article or in a particular process, or use of a known substance is of greater efficiency
than the original substance then the article or process could be considered as an invention, hence
could be patented.

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 are significantly
different in terms of efficacy.

In Novartis Ag v. Union of India, 2013. As per Trade-Related Aspects of Intellectual Property

Rights (TRIPS) agreement, India has started providing product patent After 1 January 1995.
Novartis filed patent applications of “imatinib” and the patents were granted in the USA. After
this Novartis filled patent application which claimed for “beta crystalline” form of imatinib
mesylate and a patent was granted in the USA and other countries. The Indian Patent Office
rejected the patent based on the ground of failure to promise novelty and non-obviousness. They
said it is a modified version of an existing drug hence on the ground of Section 3(d) the patent
cannot be granted. Novartis argued that beta crystalline form is a polymorph of imatinib
mesylate and it showed better flow property, improvement in thermodynamic stability, reduced
hygroscopicity and augmented bioavailability. At last, the Supreme Court declared that although
the beta crystalline form of imatinib mesylate enhanced the bioavailability of the drug, it did not
prove enhancement of efficacy hence it was found to be non-patentable under Section 3(d) in
India. The same product patent was granted in USA but rejected in India as patentability criteria
have been provided in TRIPS but their interpretation may vary from country to country.

10
As The Indian Patents Act, 1970 Amended in 2005.

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Section 3(d) has created a significant impact in determining the patentability of pharmaceutical
derivatives in India. Indian Patent Office opposes the concept of “ever greening” which is a
practice of inventors of patented products for extending their monopoly period by various
strategies (for example over associated delivery systems, or new pharmaceutical mixtures, etc.)

In Glochem Industries Ltd vs Cadila Healthcare Ltd 11., The Bombay High Court held that
“Section 3 (d) consists of all fields including the field of pharmacology. Further, in this case, the
court held that “the test to decide whether the discovery is an invention or not? It is on the patent
applicant to show that the discovery has resulted in enhancement of known therapeutic efficacy
of the original substance and if the discovery is nothing other than the derivative of a known
substance, then, it must be shown that the properties in derivatives are significantly different in
terms of efficacy. So under this sub-section, the very discovery of a new form of a known
substance which does not result in the enhancement of the known efficacy of that substance will
not be treated as an invention.

In Ten Xc Wireless Inc & Anr vs Mobi Antenna Technologies 12., The Delhi
High Court held that “a method of replacing conventional antennae with split-
sector antennae; a split-sector asymmetric antenna for replacing conventional
antennae – are all mere uses for the asymmetric antenna already known. Under
Section 3(d) the subject matter claimed is therefore not an invention.

(e) A substance obtained by a mere admixing of two or more mixtures resulting

only in the aggregation of the properties of the components thereof or a process for
producing such substance is not considered the invention, hence are non-
patentable. For example- The combination of Paracetamol (Antipyretic) &
Ibuprofen (Analgesic).

However, an admixture resulting in synergistic properties is not considered as mere

admixture, e.g., soap, detergent etc. and may be considered to be patentable.

11
Decided on 6 Nov 2009.
12
Decided on 4 Nov 2011.

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(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 & are
not Patentable.

Explanation- Mere improvement on something or combinations of different matters known

before cannot be patentable unless this produces a new result or article. The merit of the new
combination very much depends upon the result produced. If a slight alteration turns which
previously was practically useless into useful and important, it is a fit subject matter for patent.

In CTR Manufacturing Industries Ltd. v. STE Prevention Technologies Pvt. Ltd., it was
held that, with respect to combination patents, the issue for determination is whether the
combination of integers was at the relevant time obvious and not whether each integer regarded
in isolation was obvious.

(g) Omitted by the Patents (Amendment) Act, 2002.

Section 3(g) was as follows: ‘a method or process of testing applicable during the process of
manufacture for rendering the machine, apparatus, or other equipment more efficient or for the
improvement or restoration of the existing machine, apparatus or other equipment or for the
improvement or control of manufacture’. Omission of this section widens the scope of
patentability

(h) Horticulture or agricultural method is non-patentable. But, agricultural

equipments are Patentable.

Explanation- a method of producing plants like cultivation of algae and

mushrooms or improving the soil is not an invention and cannot be patentable.

Case study - In 2009, Patent application for “Process for the Production of Recombinant
Proteins Using Carnivorous Plants” was filed. The applicant claimed that carnivorous plant
can be used as a medium for the production of the protein of interest. And claimed a process in
which plant was genetically modified by transformation and protein was expressed in the
digestive secretion of the genetically modified plant. Hence, this patent application was refused

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based on ground that cultivation of plant, harvesting of fluid from the trap was considered as a
method of agriculture hence it was also not a patentable invention as per Section 3(h)

(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 are non-patentable.

For example:-

1. Medicinal methods :- A process of administering medicines orally or

through injectable etc.

2. Surgical methods - A stitch free incision for cataract removal.

3. Curative methods - A method of cleaning plaque from teeth.

4. Prophylactic methods - A method of vaccination.

Case Study- Patent application for method for hybrid gastro-jejunostomy in 2007. The
invention is related to methods for joining one piece to the tissue to another piece of tissue. The
method can further include deploying a fastener into the first and second pieces of tissue through
the actuation portion of the applier device, thereby joining the first and second pieces of tissue to
form an anastomosis between the first and second lumens. The patent controller held that the
subject matter (a method for joining tissues) is excluded from patentability according to Section
3(i) of the Act.

In Mayo Collaborative Services V. Prometheus Laboratories, Inc13., In this case, the US

Supreme Court said that “diagnostic and therapeutic methods (which includes the treatment or
cure of diseases) is not patentable as it claims a law of nature”.

13
2012 U.S. LEXIS 2316.

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(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 are not an invention.

Example: Clones and new varieties of plants.

But, Micro-organisms may be patentable provided they are not discovered form the
nature and there is sufficient man-made interference in them. Plant varieties are
subject matter of protection under the Protection of Plant Varieties and Farmers'
Rights Act, 2001.

(k) A mathematical or business method or a computer program per se or

algorithms are not an invention.

For example- Computer program, A method of calculation, finding square roots,

cube roots etc. are therefore not patentable. Combination of hardware and software
is patentable.

In India, the Patent Amendment Act, 2005 sought to introduce software patents. The amendment
proposed in the Patent Amendment Act 2005 for Clause 3(k) was, “a computer program per se
other than its technical application to industry or a combination with hardware; a mathematical
method or a business method or algorithms.” However, this amendment was rejected by the
Indian Parliament, which chose to retain Clause 3(k) as it is.

Case study- Patent application for “Chaos Theoretical Exponent Value Calculation System”
was filed in 2007. The invention is about the system which can analyze a time series signal using
a method based on Chaos Theory and calculation of a chaos theoretical exponent value (CTEV).
The inventor proposed a system which can process at a high speed and on a real-time basis to
calculate a CTEV even from a time series signal which includes noises. The average CTEV can
also be calculated in a shorter time of two decimal orders or more. The Deputy Controller
rejected a patent under Section 3(k) of the Patents Act.

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The Manual of Patent Office Practice and Procedure provides a reason as to why mathematical
or business methods are not considered patentable. “Mathematical methods” includes mental
skill as they are not patentable. Mathematical methods are used for writing algorithms and
computer programs for different applications are also not patentable although the applicants may
argue that the said invention is of technical advancement, not the mathematical model.14

The term business methods involves whole gamut of activities in a commercial or industrial
enterprise relating to transaction of goods and services. The reason for not giving patent
protection to business methods is that it may unnecessarily cut competition and promote
monopoly.

(l) A literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever including cinematographic works and television productions is not an
invention and are not patentable.

Explanation– such activities like writings, painting, sculpting, choreographing,

cinematographing all these which are related to creativity cannot be patented and
fall under the gamut of Copyright Act, 1957.

(m) A mere scheme or rule or method of performing mental act or method of

playing a game are not an invention.

Explanation- playing a game such as Chess, Sudoku, method of teaching, etc. are
mere brain exercises and hence are not patented.

(n) Any manner, means or method of expressing information whether visual,

audible or tangible by words, signals etc. is not patentable. For instance, symbols,
diagrams, railway time-table, 100 years calendar etc.

(o) The topography of integrated circuits is non-patentable

14
Hetal Patel & Sandesh Lodha, Case study on Rejected patents in India, IntechOpen, (Last visited on Nov 2,2021,
4:31 PM), https://www.intechopen.com/chapters/72054

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Three-dimensional configuration of the electronic circuits used in microchips and
semiconductor chips is not patentable because protection of Layout Designs of
Integrated Circuits is governed separately under the Semiconductor Integrated
Circuit Lay-out Designs Act, 2000.

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

aggregation or duplication of known properties of the traditionally known
component or components is not Patentable.

Explanation- the traditional knowledge is know-how, skills, that is passed from

generations to generations of a community and is already known cannot be
patented. For example- the antiseptic properties of turmeric, neem, tulsi, etc.
Although, if someone develops a medicine from tradition plant, for example.
Ointment having an active ingredient that is an extract from leaf of the plant, is
patentable.

The Govt. of India has developed Traditional Knowledge Digital Library which is
a very useful database for the patent office to find out whether a particular
invention is based on traditional knowledge or not.

In Dhanpat Seth v. Nil Kamal Plastic Crates Ltd 2014., A device used for
manually hauling agricultural produce was patented by Dhanpat Sheth. He made
this device so flexible that it can fit to persons of varying height and size. Initially
this patent was granted but afterward it was revoked as Nil Kamal Plastic Crates
Ltd. sui him in Himachal Pradesh High Court. The patent was revoked on the
ground of lack of novelty (Section 2(1)(ja)), & it’s a mere duplication of
traditionally known component known as “Kilta” (Section 3(p)) and it’s a mere
replacement of raw material as plastic has been used in the patented product
whereas bamboo was used in kilta [Section 3(d)].

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it was held that, the device developed by plaintiffs is in fact the result of traditional
knowledge and aggregation of known products such as polymers and therefore
cannot be said to be an invention.

ATOMIC-ENERGY INVENTIONS ARE NON -PATENTABLE.

Section 4 deals with inventions relating to atomic energy, that are also not
patentable and that fall within sub-section (1) of section 20 of the Atomic Energy
Act, 1962.

CONCLUSION

As per the Indian Patent Act, Section 2 describes patentability criteria, whereas
Sections 3 and 4 describe non-patentable inventions. The patent is granted to the
inventor to encourage innovations by providing exclusive rights to the owner for
the limited period of time and to reveal his invention for propagation of knowledge
and welfare of the society. Intellectual property protection is of larger importance
to the researcher and research industries as the research and development process
is expensive and time-consuming.

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