INTELLECTUAL PROPERTY RIGHTS-I ASSIGNMENT

ON

PATENT- CONCEPT, SUBJECT-MATTER NATURE&KIND, GENESIS,

EMERGENCE AND INTERNATIONAL LEGAL FRAMEWORK

SUBMITTED BY: AISHA ALI

B.A.LL.B. (REGULAR)

SEMESTER- VIII

18BLW008

SUBMITTED TO: DR. SHABNAM SHABANA

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 ACKNOWLEDGMENT

I would like to express my special gratitude to my teacher Ma’am Shabnam Shabana for her
immense work during this tough time and guiding us consistently through online classes. My
topic of research is on PATENT- CONCEPT, SUBJECT-MATTER NATURE&KIND,
GENESIS, EMERGENCE AND INTERNATIONAL LEGAL FRAMEWORK. The research
on this topic has indeed added much to my bucket of knowledge and it would not have been
possible without her guidance. Secondly, I would like to thank my parents for providing me with
the environment in the home in which I can learn and study and my friends who kept me updated
with all the work deadlines.

AISHA ALI

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Table of Contents

ACKNOWLEDGEMENT.......................................................................................................................4

ABSTRACT………………………………………………………………………………………5

INTRODUCTION.................................................................................................................................5

GENESIS AND EMERGENCE………………………………………………………………………6

INTERNATIONAL LEGAL FRAMEWORK FOR PATENTS

 PATENT-RELATED TREATIES…………………………………………………………….8
 PARIS CONVENTION, 1883……………………………………………………....8
 PATENT COOPERATION TREATY (PCT), 1978…………………………………….8
 STRASBOURG AGREEMENT CONCERNING THE INTERNATIONAL PATENT

CLASSIFICATION, 1975………………………………………………………….9
 PATENT LAW TREATY (PLT), 2000……………………………………………….9
 BUDAPEST TREATY, 1977………………………………………………………9
 TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS), 1995…9
HISTORY………………………………………………………………………………………..9

PATENTS (AMENDMENT)ACT, 2002…………………………………………………………….13

PATENTS (AMENDMENTS) RULES 2021………………………………………………………….14

CURRENT POSITION…………………………………………………………………………….15

NATURE OF PATENT……………………………………………………………………………15

KIND OF PATENT………………………………………………………………………………16

 UTILITY PATENTS……………………………………………………………...…….16
 DESIGN PATENTS…………………………………………………………………….16
 PLANT PATENTS………………………………………………………………………16

SUBJECT-MATTER OF PATENT…………………………………………………….……………17

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  PATENT SUBJECT………………………………………………………………….17
 NOVELTY………………………………………………………………………….17

 INVENTIVE STEPS OR NON-CLARITY……………………………………………….18

 CAPABLE OF INDUSTRIAL APPLICATION…………………………………………...18

WHAT ARE INVENTIONS? .....................................................................................................18

 Novartis AG V. Union of India (2013)…………………………………..18

EXCEPTION TO NOVELTY RULE……………………………………………………………19

TERM OF PATENT…………………………………………………………………………..21

APPEAL PROCEDURE………………………………………………………………………..22

PATENT RIGHTS…………………………………………………………………………….22

CONCLUSION………………………………………………………………………………………..23

BIBLIOGRAPHY…………………………………………………………………………………..…..24

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“The good patent gives the world something it did not truly have before, whereas the bad
patent has the effect of trying to take away from the world something which it effectively
already had.”

— Giles Sutherland Rich

ABSTRACT

The very essence of Intellectual Property Rights advocates an approach, which tends to delineate
from competitive practices as well as the states resolve towards welfare measures. The Indian
patent jurisprudence, after considerable amendments on par with changes and upheavals
occurring around the world, has been developing steadily. The purpose of the Patent Clause is to
ensure that inventors are given a limited monopoly in order to encourage innovation, or to
“progress the useful arts and sciences.”

This assignment explores differing stages of patent law, from its emergence to different
amendment it went from time to time. It also includes its nature and kind and subject-matter and
finally concludes it with how India has always acknowledged the importance of a strong patent
system for the development of industry and commerce, which is evident from the timely
amendment.

INTRODUCTION

Intellectual property is an intangible form of property while a 'Patent' is a subset of intellectual

property. Granting of a patent provides a statutory right by the state to the inventor of the
invention to exclude others from making, using, or selling their invention for the limited
duration of 20 years. Patent law is one of the most popular classifications of intellectual property.
It guides patents which protect inventions and methods1 that have met certain criteria-that is,
they must meet the legally required patentability criteria of novelty/newness, inventive step and
industrial application for protection. Holders of such patents are granted a monopoly over the
patented goods-thus, such holders are given rights to preclude others from making, using, selling
or importing any patent-infringing product.1

1
What is Intellectual Property, available at: https://www.wipo.int/ (last visited May 9, 2022).

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GENESIS AND EMERGENCE

The first recorded patent for an industrial invention was granted in 1421 in Florence to the
architect and engineer Filippo Brunelleschi. The patent gave him a three-year monopoly on the
manufacture of a barge with hoisting gear used to transport marble. 2

In 1623 Parliament enacted the Statute of Monopolies. Although the statute prohibited most
royal monopolies, it specifically preserved the right to grant “letters patent” for inventions of
new manufactures for up to 14 years. In the United States the Constitution authorizes Congress
to create a national patent system to “promote the Progress of Science and useful Arts” by
“securing for limited Times to…Inventors the exclusive Right to their respective Discoveries”
(Article I, Section 8). Congress passed the first Patent Statute in 1790. France enacted its patent
system the following year.3 By the end of the 19th century, many countries had patent laws, and
today there are more than 100 separate jurisdictions regarding patents.4

Efforts have been made to facilitate this process, the first major result of which was the
International Convention for the Protection of Industrial Property. Originally adopted in
Paris in 1883 and amended several times since, it gave inventors who filed an application in one
member country the benefit of that first filing date for applications in other member states. The
1970 Patent Cooperation Treaty simplified the filing of patent applications on the same invention
in different countries by providing centralized filing procedures and a standardized application
format. The European Patent Convention, which was implemented in 1977, created a European
Patent Office that can issue a European patent, which acquires the status of a national patent in
each of the member nations designated by the applicant.

By far the most important outgrowth of the pressure for international harmonization has been the
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which was
negotiated as part of the Uruguay Round (1986–94) of the General Agreement on Tariffs and
Trade. The TRIPS Agreement requires all member countries of the World Trade Organization
(WTO) to extend patent protection to “any inventions, whether products or processes, in all

2
William Weston Fisher, Encyclopedia Britannica (Patent Law).
3
Ladas & Perry, Education Center, “A Brief History of the Patent Law of the United States.” Available
at:http://ladas.com/a-brief-history-of-the-patent-law-of-the-united-states-2/( Last Visited May 09,2022).
4
Pamela Collins, “A Brief History of U.S. Patent Law,” Head, Johnson, & Kachigan, P.C.(2012).

6
fields of technology, provided that they are new, involve an inventive step and are capable of
industrial application5

The first step of the patent in India was Act VI of 1856. The main objective of the legislation
was to encourage the respective inventions of new and useful manufactures and to induce
inventors to reveal their inventions and make available for public. The Act was repealed by Act
IX of 1857 as it had been enacted without the approval of the British Crown. Fresh legislation
was enacted for granting ‘exclusive privileges’ was introduced in 1859 as Act XV of 1859. 6 This
legislation undergoes specific modifications of the previous legislation, namely, grant of
exclusive privileges to useful inventions only, an extension of priority period from 6 months to
12 months. The Act excluded importers from the definition of an inventor. The Act was then
amended in 1872, 1883 and 1888.

The Indian Patent and Design Act, 1911 repealed all previous acts. The Patents Act 1970, along
with the Patent Rules 1972, came into force on 20 April 1972, replacing the Indian Patent and
Design Act 1911.

Later, India became signatory to many international arrangements with an objective of

strengthening its patent law and coming in league with the modern world. One of the significant
steps towards achieving this objective was becoming the member of the Trade Related
Intellectual Property Rights (TRIPS) system. Significantly, India also became signatory of the
Paris Convention and the Patent Cooperation Treaty on 7th December 1998 and thereafter signed
the Budapest Treaty on 17th December 2001.7

The Patent Act is basically based on the recommendations of the report Justice Ann. The
Ayyangar Committee headed by Rajagopala Iyengar. One of the recommendations was the
allowance of process patents in relation to inventions related to drugs, drugs, food and chemicals.
Again The Patents Act, 1970 was amended by the Patents (Amendment) Act, 2005 regarding
extending product patents in all areas of technology including food, medicine, chemicals and
microorganisms. Following the amendment, provisions relating to exclusive marketing rights

5
Intellectual Property: A. Patent: Additional Developments, Berkeley Technology Law Journal, Vol. 22, Issue 1
(2007), pp. 259-266
6
Duhigg Chailes and Steve Lohr, “The Patent Used as a Sword, Available at:
http://www.nytimes.com/2012/10/08/technology/patent (Last Visited on May 05th, 2022).
7
Vijay Pal Dalmiya, Patent Law in India, Available at: https://www.mondaq.com/ (Last Visited May 10, 2022).

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(EMR) have been repealed, and a provision has been introduced to enable the grant of
compulsory licenses. Provisions related to pre-grant and anti-post protests have also been
introduced.

INTERNATIONAL LEGAL FRAMEWORK FOR PATENTS

PATENT-RELATED TREATIES

PARIS CONVENTION, 1883

The first major international agreement relating to the protection of industrial property rights,
including patents. It outlines, in particular, national treatment, the right of priority, and a number
of common rules in the field of substantive patent law. The Paris Convention, adopted in 1883,
applies to industrial property in the widest sense, including patents, trademarks, industrial
designs, utility models, service marks, trade names, geographical indications and the repression
of unfair competition.

PATENT COOPERATION TREATY (PCT), 1978

The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It
provides a unified procedure for filing patent applications to protect inventions in each of its
contracting states. A patent application filed under the PCT is called an international application,
or PCT application. This treaty established an international patent filing system, making it
possible to seek patent protection for an invention simultaneously in each of a large number of
countries.

STRASBOURG AGREEMENT CONCERNING THE INTERNATIONAL PATENT

CLASSIFICATION, 1975

The Strasbourg Agreement Concerning the International Patent Classification (or IPC), also
known as the IPC Agreement, is an international treaty that established a common classification
for patents for invention, inventors' certificates, utility models and utility certificates, known as
the "International Patent Classification" (IPC). The treaty was signed in Strasbourg, France, on
March 24, 1971, it entered into force on October 7, 1975, and was amended on September 28,

8
1979.A regularly updated international system for classifying inventions in patent applications,
allowing more efficient search and retrieval of patent information8

PATENT LAW TREATY (PLT), 2000

The Patent Law Treaty (PLT) is an international agreement used in the how to patent an idea
process to simplify the formalities associated with patent application procedures in multiple
countries. The World Intellectual Property Organization (WIPO) adopted the PLT on June 1,
2000.The PLT establishes common and, as a general rule, maximum requirements regarding
many of the procedural formalities relating to national/regional patent applications and patents

BUDAPEST TREATY, 1977- The Budapest Treaty concerns the international disclosure of bio
technological inventions. It stipulates that, for the purpose of the patent procedure, the deposit of
microorganisms with an "international depository authority" must be recognized by any
contracting state TRIPS — Trade-Related Aspects of Intellectual Property Rights

TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS),

1995

The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is the
most comprehensive multilateral agreement on intellectual property (IP). It plays a central role in
facilitating trade in knowledge and creativity, in resolving trade disputes over IP, and in assuring
WTO members the latitude to achieve their domestic policy objectives. It frames the IP system in
terms of innovation, technology transfer and public welfare. The Agreement is a legal
recognition of the significance of links between IP and trade and the need for a balanced IP
system.9

 The TRIPS Agreement requires Member countries to make patents available for any
inventions, whether products or processes, in all fields of technology without discrimination,
subject to the normal tests of novelty, inventiveness and industrial applicability. It is also
required that patents be available and patent rights enjoyable without discrimination as to the
place of invention and whether products are imported or locally produced (Article 27.1).
8
Ebert, Lawrence B , “On Patent Quality and Patent Reform” Journal of the Patent and Trademark Office Society,
Vol. 88, Issue 12 (December 2006), pp. 1068-1076.

9
SumanSahai, Indian Patents Act and TRIPS” Economic and Political Weekly, Vol. 28, No. 29/30 (1993), pp. 1496.

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 There are three permissible exceptions to the basic rule on patentability. One is for inventions
contrary to ordre public or morality; this explicitly includes inventions dangerous to human,
animal or plant life or health or seriously prejudicial to the environment. The use of this
exception is subject to the condition that the commercial exploitation of the invention must
also be prevented and this prevention must be necessary for the protection of ordre public or
morality (Article 27.2).
 The second exception is that Members may exclude from patentability diagnostic, therapeutic
and surgical methods for the treatment of humans or animals (Article 27.3(a)).
 The third is that Members may exclude plants and animals other than micro-organisms and
essentially biological processes for the production of plants or animals other than non-
biological and microbiological processes. However, any country excluding plant varieties
from patent protection must provide an effective sui generis system of protection. Moreover,
the whole provision is subject to review four years after entry into force of the Agreement
(Article 27.3(b)).
 The exclusive rights that must be conferred by a product patent are the ones of making,
using, offering for sale, selling, and importing for these purposes. Process patent protection
must give rights not only over use of the process but also over products obtained directly by
the process. Patent owners shall also have the right to assign, or transfer by succession, the
patent and to conclude licensing contracts (Article 28).
 Members may provide limited exceptions to the exclusive rights conferred by a patent,
provided that such exceptions do not unreasonably conflict with a normal exploitation of the
patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking
account of the legitimate interests of third parties (Article 30).
 The term of protection available shall not end before the expiration of a period of 20 years
counted from the filing date (Article 33).
 Members shall require that an applicant for a patent shall disclose the invention in a manner
sufficiently clear and complete for the invention to be carried out by a person skilled in the
art and may require the applicant to indicate the best mode for carrying out the invention
known to the inventor at the filing date or, where priority is claimed, at the priority date of
the application (Article 29.1).
 If the subject-matter of a patent is a process for obtaining a product, the judicial authorities

10
 shall have the authority to order the defendant to prove that the process to obtain an identical
product is different from the patented process, where certain conditions indicating likelihood
that the protected process was used are met (Article 34).
 Compulsory licensing and government use without the authorization of the right holder are
allowed, but are made subject to conditions aimed at protecting the legitimate interests of the
right holder. The conditions are mainly contained in Article 31. These include the obligation,
as a general rule, to grant such licences only if an unsuccessful attempt has been made to
acquire a voluntary licence on reasonable terms and conditions within a reasonable period of
time; the requirement to pay adequate remuneration in the circumstances of each case, taking
into account the economic value of the licence; and a requirement that decisions be subject to
judicial or other independent review by a distinct higher authority. Certain of these
conditions are relaxed where compulsory licences are employed to remedy practices that
have been established as anticompetitive by a legal process. These conditions should be read
together with the related provisions of Article 27.1, which require that patent rights shall be
enjoyable without discrimination as to the field of technology, and whether products are
imported or locally produced.
Bayer Corporation v Union of India10 

India’s First Compulsory License

On March 9, 2012, the Indian Patent Office granted its first Compulsory License to Natco
Pharma Ltd. for producing generic version of Bayer Corporations’s patented medicine Nexavar
(Sorafenib Tosylate), which is used in the treatment of Liver and Kidney cancer. While the
multinational giant was selling the drug at INR 2.80 lakh for a month’s course, Natco promised
to make available the same at a price of about 3 % (INR 8800) of what was charged by Bayer.
Natco was directed to pay 6 percent of the net sales of the drug as royalty to Bayer. Among other
important terms and condition of the non assignable, non exclusive license were directions to
Natco to manufacture the patented drug only at their own manufacturing facility, selling the drug
only within the Indian Territory and supplying the patented drug to at least 600 needy and
deserving patients per year free of cost.

10
2014 (60) PTC 277 (Bom).

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The Board held that the Controller was right in holding that the sales of the drug by the appellant
at the price of about 280,000/- wasalone relevant for the determination of public requirement and
he was also right in considering the purchasing capacity of the public and the evidence available
to conclude that the invention was not reasonably affordable to the public.On the percentage of
royalty that was to be paid by the Respondent to the Appellant (6% that was fixed by the
Controller), IPAB increased it by 1 percent but did not change any other terms and conditions of
the licence. The IPAB dismissed the appeal and confirmed the grant of Compulsory license
stating that it has dealt with each of the issue indetail in view of the significance of the order of
compulsory licence made in India for the first time.

HISTORY:

Being a signatory to TRIPS, India was under a contractual obligation to amend its Patents Act to
comply with its provisions. India had to meet the first set of requirements on 1st January 1995 to
give a pipeline protection till the country starts granting product patent. On 26th March, 1999,
Patents (Amendment) Act, 1999 came into force retrospective effect from 1st January, 1995. The
main amendments are as follows:

 Section 5(2) was introduced which provides for filing of applications for patent in the
field of drugs, medicines and agro-chemicals. These applications were kept pending in
the mailbox or black box. This mailbox was to be opened on 1st January 2005.
 Provision of Exclusive Marketing Rights (EMR) was brought in by way of Chapter IV A.
Thus, pipeline protection was provided for pharmaceutical and agro-chemical
manufacturers whose applications for product were lying in black box.
 Section 39 was omitted from the Act, thereby enabling the Indian residents to file the
applications for in an outside India simultaneously.
 Chapter II (A) was inserted in the Indian Patent Rules dealing with International
Applications under PCT.

The second phase of amendment was brought in by the Patents (Amendment) Act, 2002 which
came into force on 20th May 2003. The main features of the amendments included:

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I. Term of patent was extended from 14 to 20 years, wherein the date of patent was the date of
filing of complete specification. Also the difference in term of a drug/food patent and other
patent was removed.

II. The definition of "invention" was made in conformity with the provisions of TRIPS
Agreement by introducing the concept of inventive step, thereby enlarging the scope of
invention.

III. Deferred examination system was introduced.

IV. Introdutcion of the provision of publication of application after 18 months from the date of
filing thereby bringing India at par with the rest of the world.

V. Microorganisms became patentable, whereas inventions relating to traditional knowledge

were included in the list of "what are not inventions".

VII. The concept of unity of invention in accordance with EPC and PCT.

VII. Section 39 was reintroduced thereby prohibiting the Indian residents to apply abroad
without prior permission or first filing in India.

VIII. Provisions of Appellate Board were brought in by inserting section 116. All appeals to the
decision of the Controller would be appealable before the Appellate Board. The Head Quarter of
the Appeallate Board is to be in Chennai.

IX. Section 117 provided for Bolar provision for the benefit of agrochemical and pharmaceutical
industry.

The third amendment to the Patents Act, 1970 came by way of Patents (Amendment) Ordinance,
2004, which was later replaced by The Patent (Amendment) Act, 2005, and Patents
(Amendment) Rules, 2006 with retrospective effect from 1st January, 2005. With the third
amendment India met with the international obligations under the TRIPS. Significant
achievements of this amendment were:

1. Deletion of section 5, opening of mailbox and grant of product patents. Thus this
amendment led to the dawn of the "product patent regime" in India.

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 2. Abolition of Exclusive Marketing Rights (EMR).
.
PATENTS (AMENDMENTS) RULES 2021

The Ministry of Department for Promotion of Industry and Internal Trade notified the Patents
(Amendments) Rules 2021 which have come into force on 21 September 2021.

Patent Fees for Educational Institutions Reduced:

Educational institutions engage in many research activities, where professors and teachers and
students generate several new technologies which need to be patented for facilitating
commercialization of the same.

At the time of applying for patents, the innovators have to apply these patents in the name of the
institutions which have to pay fees for large applicants, which are very high and thus work as a
disincentive. In this regard and to encourage greater participation of the educational institutions,
official fees payable by them in respect of various acts under the Patents Rules, 2003, have been
reduced by way of the Patents (Amendment) Rules, 2021.

Benefits related to 80% reduced fee for patent filing & prosecution have been extended to all
educational institutions. This benefit was earlier available to all recognised educational
institutions owned by the government.

Extension of Expedited Examination System:

The fastest granted patent is the one which was granted in 41 days after filing of such request.
This facility of Expedited Examination system was initially provided for patent applications filed
by Startups.

It has been now extended to 8 more categories of Patent Applicants:

SME (Small and Medium Enterprises), Female applicants, Government Departments, Institutions
established by a Central, Provincial or State Act, Government Company, an Institution wholly or
substantially financed by the Government and applicants under Patents Prosecution Highway.

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The Patent Prosecution Highway (PPH) is a set of initiatives for providing accelerated patent
prosecution procedures by sharing information between some patent offices.

Current Position: The present Indian position in respect of patent law is governed by the
provisions of the Patents Act, 1970 as amended by the Patents (Amendment) Act, 2005 and
Patents Acts Rules, 2006 and finally the Patent (amendment) Rules,2021.

The Head Patent Office is located at Kolkata and its branch offices are located at Delhi, Mumbai
and Chennai. Patent system in India is administered by the Controller General of Patents,
Designs, Trademarks and Geographical Indications. Each office has its own territorial
jurisdiction for receiving patent applications and is empowered to deal with all sections of Patent
Act.

NATURE OF PATENT

Under the Indian patent law, a patent can be obtained only for an invention which is new and
useful. The invention must relate to the machine, article or substance produced by a
manufacturer, or the process of manufacture of an article. A patent may also be obtained for
innovation of an article or of a process of manufacture. In respect to medicine or drug and certain
classes of chemicals, no patent is granted for the substance itself even if it is new, but the process
of manufacturing and substance is patentable. The application for a patent must be true and the
first inventor or the person who has derived title from him, the right to apply for a patent being
assignable.11

Some inventions cannot be patented. In the European Patent Convention (EPC) law there is the
list of non-patentable subject-matter which includes methods of medical treatment or diagnosis,
and new plant or animal varieties. Further information on such fields can be obtained from a
patent attorney. Nor many patents be granted for inventions whose exploitation would be
contrary to public order or morality (obvious examples being land-mines or letter-bombs).The
following are not regarded as inventions, discoveries, innovations, scientific theories and
mathematical methods, aesthetic creations, such as art or literature works or art of writing,

11

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schemes, rules and methods for performing mental acts, playing games or doing business,
presentations of information, computer software.12

KINDS OF PATENT

Utility Patents- A utility patent is the most common type of patent that people seek. This type of
patent covers processes, compositions of matter, machines, and manufactures that are new and
useful. A utility patent can also be obtained for new and useful improvements to existing
processes, compositions of matter, machines, and manufactures. Processes refer to any acts or
methods of doing something, usually involving industrial or technical processes. Compositions
of matter are basically chemical compositions, which can include a mixture of ingredients or new
chemical compounds. Machines include things that are generally defined as a machine, such as a
computer, while manufactures are defined as goods that are manufactured or made.

Design Patents- In terms of obtaining a design patent, a design is defined as the "surface
ornamentation" of an object, which can include the shape or configuration of an object. In order
to obtain this type of patent protection, the design must be inseparable from the object. While the
object and its design must be inseparable, a design patent with only protect the object's
appearance. In order to protect the functional or structural features of an object, a person must
also file for a utility patent.

Plant Patents- A plant patent can be obtained to protect new and distinctive plants. A few
requirements to obtain this type of patent are that the plant is not a tuber propagated plant (i.e. an
Irish potato), the plant is not found in an uncultivated state, and the plant can be asexually
reproduced. Asexual reproduction means that instead of being reproduced with seed, the plant is
reproduced by grafting or cutting the plant. Plant patents require asexual reproduction because
it's proof that the patent applicant can reproduce the plant.

The jurisdiction for filing the patent application depends upon:

Indian applicant(s): determined according to place of residence, place of business of the

applicant or where the invention actually originated.

12
Petra Moser, “Patents and Innovation : Evidence from Economic History” The Journal of Economic Perspectives,
Vol. 27, No. 1 30-40 (2013).

16
Foreign applicant(s): determined by the address for service in India.

SUBJECT-MATTER OF PATENT

Sections 3 and 4 of the Indian Patents Act, 1970 clearly mentioned the exclusions regarding what
can be patented in India. There are certain criteria which have to be fulfilled to obtain a patent in
India. The following criteria determine what can be patented in India:13

PATENT SUBJECT: The foremost consideration is to determine whether the invention relates to a
patentable subject-matter. Sections 3 and 4 of the Patents Act list out non-patentable subject
matter. As long as the invention does not fall under any provision of Sections 3 or 4, it means it
has patentable subject matter (subject to the satisfaction of the other criteria).

NOVELTY: Novelty is an important criterion in determining patentability of an invention. novelty

or new invention is defined under Section 2(l) of the Patents Act as "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,
i.e., the subject matter has not fallen in public domain or that it does not form part of the state of
the art". Simply put, the novelty requirement basically states that an invention should never have
been published in the public domain. It must be new with no same or similar prior arts.

INVENTIVE STEPS OR NON-CLARITY:

Inventive step is defined under Section 2(ja) of the Patents Act as "a feature of an invention that
involves technical advance as 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". This
means that the invention must not be obvious to a person skilled in the same field as the
invention relates to. It must be inventive and not obvious to a person skilled in the same field.14

CAPABLE OF INDUSTRIAL APPLICATION:

Industrial applicability is defined under Section 2(ac) of the Patents Act as "the invention is
capable of being made or used in an industry". This essentially means that the invention cannot

13
N.S. Gopalakrishnan and T.G. Agitha, “Principles of Intellectual Property” (Eastern Book Co. 9th edn., 2009).
14
Stephen M. Maurer, “Ideas into practice : how well does U.S. patent law implement modern innovation
theory?”12 J. Marshall Rev. Intell. Prop. L. 656-59 (2012).

17
exist in abstract. It must be capable of being applied in any industry, which means that the
invention must have practical utility in order to be patentable.

These are the statutory criterion for the patentability of an invention. Apart from this, another
important criterion for getting a patent is disclosure of an enabling patent. An enabling patent
disclosure means a patent draft specification must disclose the invention sufficiently, so as to
enable a person skilled in the same field as the invention relates to, to carry out the invention
without undue effort. If the patent specification does not disclose an enabling patent then a patent
will most definitely not be granted.

WHAT ARE INVENTIONS?

The Act provides for the definition of the invention, which is now compliant with the provisions
of TRIPS. The criteria for patentability of an invention are novelty, inventive step and industrial
applicability.

Section 2(1)(j) of the Patent Act, 2005, defines the "invention" as a new product or as process
involving an inventive step and capable of industrial application.

Under the Act "New invention" is defined under section 2(1)(l) of the Patents Act

"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, i.e., the subject matter has not fallen in
public domain or that it does not form part of the state of the art.

Thus, according to this definition of new invention, Act talks of absolute novelty, i.e. the
invention should have neither been used anywhere in the world nor published in any part of the
world. However, the later sections of the act for the purpose of anticipation and opposition
proceedings deal with the relative novelty i.e. not used in India and not published in any part of
the world. Further, entire Act refers to the word invention and not new invention. Therefore, for
all purposes relative novelty is the criterion.

EXCEPTIONS TO THE NOVELTY RULE:

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There are a few exceptions where the rule of novelty is not applicable. These cases are as
follows:

 Subject matter published without the consent of the inventor.

 The invention was published in consequence of the display in an exhibition notified by the
Government or reading the paper before a Learned Society. Grace period of 12 months is
given in such cases to file the patent application.
 Previous communication to Government of India.
 Public working for reasonable trials.
 "Inventive Step" is defined under Section 2 (1) (ja) of the "Act". Prior to the Amendment
of 2005, inventive step meant a feature that makes the invention not obvious to a person
skilled in the art. The new Act of 2005 defined inventive step more precisely.
"Inventive step means a feature of an invention that involves technical advance as
compare to the existing knowledge or having economic significance or both and that
makes the invention not obvious to a person skilled in the art."
Thus, in addition to the non-obviousness criterion two other conditions were added i.e. it should
also involve technical advancement as compared to the existing knowledge or having economic
significance, or both, in addition to being non-obvious.15

The terms “technical advance” and “economic significance” have not been defined clearly and
are unambiguous. It cannot be left to presumption “economic significance” is synonymous to the
phrase “capable of industrial application” in section 2 (1)(ac) or in footnote 5 to Article 27. The
meaning of the phrase “technical advance” cannot be presumed either, in absence of a specific
definition or reference.16

The Patents Act 1970 had a very limited scope of protection wherein the essential elements of
invention were new, useful and manner of manufacture. Even though manufacture was not
defined in the old Act, the Patent Office established the practice of interpreting manufacture as
process resulting in a tangible product. The landmark decision of Calcutta High Court on the
process of production of Bursitis virus containing vaccine (Dimminaco AG v. Controller of

15
Roger E. Schechter & John R. Thomas, “Principles of Patent Law”, § 4.1, at p. 74, (2004).
16
Carl Shapiro, “Patent Reform : Aligning Reward and Contribution”, Innovation Policy and the Economy, Vol. 8
122 (2007).

19
Patents17) changed the practice and now the definition of invention is interpreted keeping in
mind the term ‘industrial application’ as under section 2(1)(j).18

An invention is capable of industrial application if it satisfies the three conditions cumulatively:

 can be made;
 can be used in at least one field of activity;
 can be reproduced with the same characteristics as many as necessary.

The judgment given by the two judge bench of the Hon'ble Supreme Court of India in the case of
Novartis AG V. Union of India19 is one the landmark judgments in India. In this case Novartis
challenged the rejection of its patent application by IPAB for Beta crystalline form of "Imatinib
mesylate" wherein such challenge was rejected by the Supreme Court of India on the ground that
the said drug did not produce an enhanced or superior therapeutic efficacy as compared to the
known substance i.e., "Imatinib mesylate" means that the said drug did not involve an inventive
step. One of the major reasons for rejecting the patent application of Novartis was to avoid ever-
greening of already patented products by introducing minor changes. In April 2013, the two
judge bench of Supreme Court of India rejected the appeal filed by Novartis and upheld that the
beta crystalline form of Imatinib Mesylate is a new form of the known substance i.e., Imatinib
Mesylate, wherein the efficacy was well known. Supreme Court made it crystal clear that in the
case of medicine "Efficacy" in section-3(d) only means "Therapeutic Efficacy" and states that all
properties of drug are not relevant, the properties which directly relate to efficacy in case of
medicine is its therapeutic efficacy. Supreme Court in third issue ruled that about 30% increase
in bioavailability qualifies as increase in therapeutic efficacy under section-3(d) of Patent Act,
1970 if evidence is provided for the same. Supreme Court compared the efficacy of "Beta
Crystalline form of Imatinib Mesylate" with "Imatinib Mesylate" with reference to its flow
properties, better thermodynamic stability and lower hygroscopicity, and held that none of these
properties contribute to increase in therapeutic efficacy according to section-3(d) of Patent Act,
1970 and Novartis not provided any document that shows that the efficacy of "Beta Crystalline
form of Imatinib Mesylate" is more as compared to the efficacy of "Imatinib Mesylate".The
17
2002.
18
Dan L. Burk and Mark A. Lemley, “Policy Levers in Patent Law”, 89 VA. L. REV. 1627 (2003).
19
(2013) 6 SCC 1.

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Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972,
replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the
recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala
Ayyangar. One of the recommendations was the allowance of only process patents with regard to
inventions relating to drugs, medicines, food and chemicals.

TERM OF PATENT:

The term of every patent granted under the Act is twenty years from the date of filing. The
patents in force on 20th May 2003 stood extended for the term of 20 years.

The term of patent in case of International applications filed under the PCT, designating India, is
twenty years from the international filing date accorded under the PCT.

Renewal fee is required to be paid annually to keep the patent in force. Restoration of patents is
possible if applied within 18 months from the date of lapse.20

APPEAL PROCEDURE:

Section 117A provides for appeals to the Appellate Board. Sub-section (1) of section 117A
makes it clear that no appeal will lie from any orders apart from those mentioned under sub-
section (2) of section 117A. While there is a provision for appeal from the order in a post-grant
opposition under section 25 (4), there is no provision for appeal under section 25(1). The
Controller can, under the Rule 55, sub-rules (5) and (6) of the Patents Rules, as they stand
presently, refuse to grant the patent or require amendment of the complete specification.

In a significant development, the Intellectual Property Appellate Board (IPAB) has come into
force with effect from April 2, 2007. All appeals relating to patent cases pending at the High
Courts have been transferred to the Appellate Board except the infringement suits and counter
suits for revocation. The appellate board comprises a bench of three members including a
technical expert.

20
David Bainbridge, “Intellectual Property”, Pearson Education, 317-318 (2003)

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PATENT RIGHTS:

The Act provides for patent protection for inventions relating to both processes and products. In
case of patents relating to product, the grant provides exclusive right to prevent unauthorized
persons from making, using, offering for sale, selling or importing the product in India.

In case of patents relating to process, the patentee receives an exclusive right to prevent
unauthorized persons from using the process and offering for sale, selling or importing for those
purposes the product obtained directly from the process in India. Product produced by the
process is also protected.21

21
Ian Ayres and Gideon Parchomovsky, “Tradable Patent Rights”, 60 Stan. L. Rev. 865-66 (2007).

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CONCLUSION:

India has always acknowledged the importance of a strong patent system for the development of
industry and commerce, which is evident for the amendments done to bring India at par with the
modern world. With the promulgation of the product patent regime in India, most of the
countries are now looking for business opportunities. There has been a considerable rise in the
patent filing. Innovators and inventors from all fields of technology are keen on protecting their
intellectual property. Patents can provide great value and increased returns to individuals and
companies on the investment made in developing new technology. Patenting should be done with
an intelligent strategy that aligns business interests to implement the technology with a wide
range of options in the search for how, where and when to patent. As an example, with a focus
on international considerations and regulations in specific countries, it is possible for a company
to achieve significant savings and improve the rights gained using patents.

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BIBLIOGRAPHY

STATUTES

PATENTS:
 (Indian) Patents Act, 1970; the Repealing & Amending Act, 1974; the Delegated
Legislation Provisions (Amendment) Act, 1985; the Patents (Amendment) Act,
1976,1999, 2002, 2005; the Patent Rules, 2003 (as adopted and amended time to time,
and repealing the Patent Rules, 1972).
 Trade Related Intellectual Properties (TRIPS) Agreement 1994 (as regards patent)
 Paris Convention for the Protection of Industrial Property (PIP), 1883 (as regards the
Patent) (last amended 1976), Stockholm) [member India since 1998]
 Patent Co-operation Treaty 1970 [member India since 1998]
 Patent Law Treaty, 200
BOOKS

 V. K. Ahuja, Intellectual Property Rights in India, (Lexis Nexis, Gurgaon, 3rd edn., 2017)
 P. Narayanan, Patent Law, (Eastern Law House, Calcutta, 4th edn., 2018).
 Vikas Vashisht, Law and Practice of Intellectual Property in India (Bharat Law House,
New Delhi, 3rd edn., 2007).
 W. R. Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights,
(Universal Law Publishing Co. Pvt. Ltd., Delhi, 5th edn., 2003)

 W. R. Cornish: Intellectual Property, Patents, Copyright, Trade Marks And Allied Rights, (sweet
& Maxwell, London, 9th edn., 2019)
CASE LAWS

 Novartis AG V. Union of India (2013).

 Dimminaco AG v. Controller of Patents (2002).
 Bayer Corporation v Union of India (2014).

ARTICLES AND JOURNALS

 Ian Ayres and Gideon Parchomovsky, “Tradable Patent Rights”, 60 Stan. L. Rev

24
  David Bainbridge, “Intellectual Property”, Pearson Education

 oger E. Schechter & John R. Thomas, “Principles of Patent Law”

 Dan L. Burk and Mark A. Lemley, “Policy Levers in Patent Law”, 89 VA. L. REV

 Carl Shapiro, “Patent Reform : Aligning Reward and Contribution”, Innovation Policy and the
Economy, Vol. 8 122 (2007).
 Stephen M. Maurer, “Ideas into practice : how well does U.S. patent law implement modern
innovation theory?”12 J. Marshall Rev. Intell. Prop. L.
 Petra Moser, “Patents and Innovation: Evidence from Economic History” The Journal of
Economic Perspectives, Vol. 27.
 Ebert, Lawrence B , “On Patent Quality and Patent Reform” Journal of the Patent and
Trademark Office Society.
 Intellectual Property: A. Patent: Additional Developments, Berkeley Technology Law.
 SumanSahai, Indian Patents Act and TRIPS” Economic and Political Weekly.

WEBSITES

 https://www.Manupatrafast.com/
 https://www.scconline.com/
 https://heinonline.org
 https://www.mondaq.com
 https://www.wipo.int/

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