3 8 .

What are the pre conditions for the qualifno

ofthe categori s of inventions, which are ification
patentable
ble and
non-patentable?
Ans. Every invention is not worthy of grant ofpatent. In.
to obtain patent an invention has to pass through the
patent. Inorder
the tripletri
requirement ofnewness (novelty), non-obvioueness and usefulnes
Further even if these conditions are fulfiled, an invention maybe deniod
ied
grant ofpatent ifit is prohibited under law. In this chapter essential
requirements for grant of patent and details of non-patentabje
inventions are discussed.
Patentable Inventions
Patent Act, 1970 (as amended in 2002) defines invention
as
uvention means a new product or process involving an inventive
step
and capable of industrial application. It further states that;
inventive
step means a feature that makes the invention non-obvious to a person
skilled in the art.
The above definition of invention reveals that
are essential in a
following attributes
product or process so as to qualify forpatent. They
areexplained hereunder:
1) Novelty- Novelty is of core value. As defined in Patent
(Amendment) Act, 2005 a 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, whicn
the subject matter has not
fallen in public domain or that it does not
form part of the state of the
art. The Indian Council of scientific ana
Industrial Research (CSIR)
challenged the grant of patent on turmer
by the U.S. Patent Office on the plea that the
patent could not De
granted since there was no novelty in the
invention.
(II) The Patents Act, 1970 provides for international
arrangements which India may make Non Obviousness-Patent rights
are not available for
new, useful and non-obvious advances that are
 Intellectual Property Laws |
merely obvious extensions or modifications
95

he achieve without the lure of ofprior designs that coula

ohtained though the invention is patent rights. A patent may not be
not
if the identifiably disclosed or described,
differences between the subject- mater sought to be
and the prior art are such that the patented
have been obvious at the time
subjectmatter as a whole
would
the invention was made to
ordinary skill in the art to which the said person having
subject-matter pertains. In
addition to novelty, potentiality is to depend, upon the non-obvious
nature of the 'subject-matter sought to be
ordinary skill in the pertinent art.
patented' to a person having
(III) Usefulness-Utility of a invention means that the invention
must be useful for the purposes indicated by the inventor or patentee.
However, it need not mean commercial utility alone. The position in
England is that, if an invention does not have any industrial
applications whatsoever it may also clearly pass the test of utility and
qualify for a patent. Section 2(i) of the Act only requires that the
invention must be useful.
C. Non-patentable Inventions
As mentioned earlier, every invention is not patentable. Law
forbids grant of patent to certain categories of invention. Section 3
states that following are not inventions within the meaning of the
Act:
anything,
which claims
i) An invention which is frivolous or
natural laws.
obviously contrary to well established
or intended use or
commercial
i) An invention the primary order or morality or
exploitation of which could be contrary public
to
animal or plant ife or health
which causes serious prejudice to human,
or to the environment.
the formulation
discovery of a scientific principle
or
(11) The mere

or non-living
substance cccurrin
7Or discovery of any living thing
in nature.
use fora
or new
property
discovery of any
new
n e mere machine o r
use of
known process,
AOWn 8ubstance or of the mere,
a
or
results in a new produet
known p r o c e s s
ParaUs unless such
employs at least one new reactant.
admixture resulting only in
obtainedbya mere process
A Substance thereofor a
the components
the of the properties of
f1Or gregationsuch
producing substance.
96 | Admit Law Series
(vi) The mere arrangement or re-arrangement
ent or
or duplina
known devices each functioning independently
ly of
of one anotonofof duplication
another
known way. ina a

(vii) A method of agriculture or horticulture. pat

He
(viii) Any process for the medicinal, surgical, cur
to.
prophylactic (diagnostic, therapeutic) or other treatment of h ve, are
beings or any other proces8. ap
(ix) Plants and animals in whole or any part thereofother+ in

micro organisms but including seeds, varieties and species a

than
essentially biological processes for production or propagation of plant.
and animals.
(x)A mathematical or business method or a computerprogram
per se or algorithms.
(xi) A literary, dramatic, musical or artistic work or any other
aesthetic creation, whatsoever including cinematographic works and
television productions.
(xiil) A mere scheme or rule or method of performing mental act
or method of playing game.
(xi) A presentation ofinformation.
(xiv) Topography of integrated circuits.
(xv) An invention which, in effect, is traditional knowledge or
which is an aggregation or duplication of known
properties
traditionally known component or components.
Inventions relating to atomic energy are not patentable
Section 4 clearly states that no patent shall be
granted in respec
ofan invention relating to atomic energy falling within sub-section(
or Section 20 of the Atomic
Energy Act,1962. This is obviously for
security reasons that invention in the field
from patent system.
ofatomic energy are exciuu
r e excluded

The above deseription has thus made it tion

clear that every invenu
is not capable of being patented. In order to
claim patent an invention
has qualify the criteria laid down under
to
and further the invention should not be Section
covered 2of
2under Patent
Patent Act
Patent
of theprohibited
Ac
A
red under prohibiteu
category mentioned under Section 3 and 4.
Q. 34. What are the rights and
under the Patent Act ? obligations of patentee