SEMICONDUCTOR ACT, 2000- Need and Exceptions- by JUNAID

In today’s dynamic and competitive environment, IP rights are key elements needed to
maintain an edge in the market. It is crucial that the companies understand that what can be
protected and how within their respective countries. The starting point of this intellectual
property was the copyrights, trademarks and the up growing patents then came legislations
covering industrial designs and geographical indications as important intellectual properties.
With the growing technology and development and with the growing competition to become
a high-tech country, a revolution in the field of Information Technology arrived. With the
advancement of this information technology, a new branch in the field of intellectual property
flourished, called as the Layout-Design or the of the semiconductor integrated circuits.
The semiconductor integrated circuit is an integral part of every computer chip. The fifth
generation computers are using Very Large Scale Integration (VLSI) where numerous
transistors are accommodated on a single chip, cutting down the size of the chip and at the
same time increasing it’s processing power significantly. This ultimately translates into
smaller and more powerful computers. Hence, the development of the layout-design on a
semiconductor integrated circuit as an intellectual property is quite significant.
Hence, a step was taken by various organizations to pass regulations regarding this issue. One
such was the World Trade Organization, and the result was the TRIPS agreement addressing
the intellectual property related issues. India being a signatory of the WTO also passed an Act
in conformity with the TRIPS agreement called the Semiconductor Integrated Circuits
Layout-Design Act (SICLDA) passed in the year 2000.
"Semiconductor Integrated circuits Layout- Design Act 2000" is a supplement act to designs.
It fulfills the obligations of TRIPS agreement (Art.35 to 38) regarding the protection of
semiconductor integrated circuits layout- designs.
 Legal Provisions In India

The Semiconductor Integrated Circuit Layout-Design Act, 2000, protects original, inherently
distinctive layout-designs that have not been previously commercially exploited. Registration
is a necessary pre-requisite for protection. The Semiconductor Integrated Circuits Layout-
Design Act, 2000 gives recognition to a new form of intellectual property, namely, the
‘layout-designs’ used in semiconductor integrated circuits as has been defined u/s 2(h) of the
Act.
Exchange of information on a worldwide basis now can occur instantaneously because it can
be stored so readily and in such quantities in semiconductor integrated circuits or chips as
they are commonly known, has far-reaching implications for privacy, international relations,
national security, and defense. Chips are often referred to as ‘the crude oil of the information
age’.
 Need of The Semiconductor Act, 2000

The need for a sui generis form of protection developed primarily as a result of chip piracy,
which threatened to undercut the vitality of the semiconductor industry. Chip pirates could
sell identical chips for lower prices than could the companies that originally designed them.
This caused legitimate companies that engaged in chip research and development to cut
prices to compete with pirated chips, which deprived legitimate companies of the funds
needed to carry out further research and development to build the next generation of chips.
Legitimate companies could not get adequate chip protection under patent, copyright, or trade
secret law, so a sui generis form of protection was provided.
Protection to semiconductor chips was first given in the US through Semiconductor Chip
Protection Act (SCPA) in 1984 and its impact was felt virtually throughout the world. Japan
introduced similar protection in 1985, viz., Japanese Circuit Layout Right Act (JCLRA). An
EC Directive, with implementing legislation in all Member States of the EU accelerated
international efforts resulting in the formulation of the 1989 Treaty on Intellectual Property in
respect of Integrated Circuits (IPIC Treaty) under the auspices of WIPO. The IPIC Treaty
was later made part of the TRIPS Agreement. TRIPS called for adherence to most of the
substantive provisions of the IPIC Treaty. As a member of TRIPS Agreement, India has
enacted the Semiconductor Integrated circuit layout-Design Act, 2000, but it has yet to come
into force. The implementation of the Act comes under the Ministry of Communication and
Information Technology. A layout-design has to be registered to receive protection under the
Act.

 Why Need for Separate Legislation apart from Patent and Copyright

Integrated circuits comprises of numerous building blocks, each block being patentable.
Since an integrated circuit contains hundreds or thousands of semiconductor devices, a claim
to an integrated circuit would have to cover hundreds or thousands of individual elements.
Consequently, a patent claim that attempts to describe an entire integrated circuit may be
hundreds of pages long. Clearly, such a narrow claim would provide almost no protection.
Even if one sought such narrow protection, writing a patent application supporting a claim
with thousands of elements would be extremely complex, cumbersome, and expensive.
Obviously, integrated circuits are not easily describable in a patent specification or the
claims. Also, it may take several years to obtain an integrated circuit patent from most patent
offices worldwide. This is unacceptable given that an integrated circuit’s useful commercial
life may be less than one year. The cumbersome, time-consuming nature of filing combined
with extremely narrow protection often makes patent law an insufficient form of protection
for integrated circuits.
Other forms of existing intellectual property protection are also inapplicable to integrated
circuit layouts. Design patents protect the ornamental, but not the functional, aspects of an
article of manufacture described in its drawings. Since integrated circuit layout is more
functional than ornamental, design patent protection is generally inapplicable to integrated
circuits. Finally, trade secret law cannot be used to protect most integrated circuits because an
integrated circuit layout may be reverse-engineered.
The layout of transistors on the semiconductor integrated circuit or topography of transistors
on the integrated circuit determines the size of the integrated circuit as well as its processing
power. That is why the layout design of transistors constitutes such an important and unique
form of intellectual property fundamentally different from other forms of intellectual property
like copyrights, trademarks, patents and industrial designs. Given that patent, copyright, and
trade secret law cannot adequately protect integrated circuit design, hence an exclusive
protection for semiconductor integrated circuits layout-design has became necessary to the
semiconductor industry.
 Subject Matter of Protection

The Act affords protection to the layout-design of a semiconductor integrated circuit.

Protection is given to the layout-design itself so that design houses producing layout-designs
would have protection for those products separate from their incorporation in a chip product.
On the contrary in the USA, a mask work is not eligible for protection unless and until it is
fixed in a semiconductor chip product. A mask work is ‘fixed’ according to Section 901(a)
(3) of the SCPA, in a semiconductor chip product “when its embodiment in the product is
sufficiently permanent or stable to permit the mask work to be perceived or reproduced from
the product for a period more than transitory duration.” Thus, a mask work will ordinarily be
fixed in a semiconductor chip product once the first product has been manufactured.
But under Article 2(ii) of the IPIC Treaty, ‘layout-design has been defined as “the three-
dimensional disposition, however expressed, of the elements, at least one of which is an
active element, and of some or all of the interconnections of an integrated circuit, or such a
three-dimensional disposition prepared for an integrated circuit intended for manufacture.”
Thus, from this too, it becomes clear that there exists no need for the design to have been
implemented in physical form as the words “or such a three-dimensional disposition prepared
for an integrated circuit intended for manufacture” have been included in the definition. The
same intention can be imputed to the Indian Legislature while it was drafting the Act.
The explanation to Section 17 also lays down that the right conferred by the registration of a
layout-design shall be available to the registered proprietor irrespective of the fact whether
the layout-design is incorporated in an article or not. Moreover, India is a member of the
TRIPS Agreement which itself obliges adherence to Article 2 through 7 of the IPIC Treaty.
This proposition gathers force from the fact that there is specialist design houses which
prepare the layout-design of an application-specific integrated circuit (ASIC) for a customer,
the topography being implemented in a separate semiconductor foundry. Clearly, it is
important for the layout-design to be protected at this stage, and not merely after its
implementation in a semiconductor chip product. Protection under the Act exists only after
the layout-design has been registered. Layout-designs can be registered, if they are:
 original,

 inherently distinctive,

 capable of being distinguishable from any other registered layout-design and

 if they have not been commercially exploited for more than two years before date of
application for registration.

Thus, the Act does not require ‘novelty’ but ‘distinctiveness’ for the purpose of registration.
A layout-design normally consists of a combination of elements and interconnections that are
commonly known among creators of layout-designs and manufacturers of semiconductor
integrated circuits and hence are considered original only if such combination taken as a
whole is the result of its creator’s own intellectual efforts. Thus, the Act has recognized that
layout-designs will usually contain design elements already existing or protected in the
semiconductor industry which is an important issue for semiconductor layout-designs as they
are, in the vast majority of cases, new compilations of well-known commonplace elements.
The Act calls for ‘creator’s own intellectual effort’ and also lies down that such designs
should not be commonplace among the creators of layout designs and manufacturers.
This may be shown by the original combination of elements of design that are not by
themselves original. Thus, a new topography may be the result of a combination of
commonplace elements, which have not been combined in precisely the same way as before.
Also, the chances are that any newly designed layout-design which is not simply a copy of an
existing design will have at least some features or combination of features which are
dissimilar to features already well-known in respect of semiconductor products.
 Exclusive Rights Provided

The registered-proprietor has the exclusive right to reproduce by any means the registered
layout-design or any substantial portion of it. However, there is one significant exception to
this exclusive right. Any person may reproduce the layout-design “for the purposes of
scientific evaluation, analysis, research or teaching. This is similar to the fair dealing
exception in copyright law. The Act also allows persons to ‘reverse-engineer’ layout-designs
for the purpose of analysing the layout-designs and incorporating the insights of their analysis
into an original layout-design of their own. Such a provision is considered to be justified, in
accordance with Article 6(2)(b) of the IPIC Treaty and the provisions in the TRIPS
Agreement, as there is a need to encourage creativity through the improvement of existing
layout-designs. Moreover, to successfully enter an integrated circuit market segment with a
new product, the new entry must usually be compatible with established products.
However, the information needed to achieve compatibility is often not publicly available.
Thus, aspiring competitors must gather this information another way. However, they must do
so without infringing layout-design rights under the Act. In defining acceptable reverse
engineering, lawmakers attempted to balance the need for protecting investments in layout-
designs with the pro-competition sentiment. The reverse engineering limitations on
protectionin the US SCPA are found in Section 906(a), (1) and(2); in Article 12(2) of the
JCLRA and in regulation8(4) of the UK Design Right (Semiconductor)Regulations 1989.
 Enforcement of Exclusive Rights

The Act expressly lays down provisions affording criminal remedies for the infringement of a
layout design. But the Act does not provide expressly for civil remedies as in other IP laws
nor does it bar these remedies. It merely refers to ‘damages’ in Section 16 which says: ‘no
person shall be entitled to institute any proceeding to prevent, or to recover damages for, the
infringement of an unregistered layout-design’. Thus, it can safely be said that the civil
remedies, such as injunctions, the account of profits and damages would be applicable to
enforce rights with respect to layout-designs as well, as in the case of patents, copyright etc.
Though, it would have been preferable if a more express provision to this extent had been
incorporated within the Act.
Unlike the law of patents and designs in India as well as other international instruments for
the protection of semiconductor topographies, the registered proprietor has criminal remedies
for the infringement of a layout-design. Thus, whoever knowingly or willfully infringes a
layout-design shall be punishable with imprisonment up to three years and/or a fine between
fifty thousand and ten lakh rupees. In case of infringement, the registered-proprietor is
required to submit a written complaint to the Court of Judicial Magistrate First Class, which
can take cognizance of this offence. The court may order forfeiture to the government of
goods related to the offence, and the same may be destroyed in case of a conviction.
Again, the Indian Act is distinctive from the existing laws on semiconductor protection. The
usefulness of providing for criminal sanctions for intentional acts of infringement lies in the
fact that the prevention of infringement of layout-design rights is in the public interest.
Criminal sanctions are usually an effective deterrent. The Act exempts from liability innocent
purchasers of infringing chip products with respect to the importation or distribution of those
products before they had notice of the layout-design protection. It also allows innocent
purchasers who receive notice of infringement, to import or distribute infringing chip
products purchased before they had notice, provided they pay the proprietor of the registered
layout-design a reasonable royalty.
 Exceptions/Defence

The registration of the layout design gives to the registered proprietor of the layout design the
exclusive right to the use of the layout design and to obtain relief in respect of infringement.
Only a registered proprietor of the layout-design or a registered user can make use the layout
design.A person may be registered as a registered user of the layout design when the
registered proprietor and the proposed registered user apply jointly in writing to the
Registrar.Use of registered layout-design with the written consent of the registered proprietor
of a registered layout-design also shall not constitute infringement.
The proprietor of a registered layout-design has powers under the Act to assign the layout-
design for any consideration. The registered layout-design may be transferred with or without
good will. However, the person who becomes entitled by assignment or transmission to a
registered layout-design shall also have to register his title with the Registrar as per the
procedure provided in the Act. Moreover, s. 18 provides following cases which do not
constitute infringement.
Educational purpose
S. 18(2): Notwithstanding anything contained in section 17, sub-section (1) or sub-section
(5), the performance of the act of reproduction referred to in clause (a) of sub-section (1),
where such act is performed for the limited purposes of scientific evaluation, analysis,
research or teaching, shall not constitute act of infringement within the meaning of that
clause.
Hence, any person may reproduce the layout-design “for the purposes of scientific evaluation,
analysis, research or teaching. This is similar to the fair dealing exception in copyright law.
This is an significant exception to the exclusive right of he registered-proprietor to reproduce
by any means the registered layout-design or any substantial portion of it.
Reverse engineering
The Act also allows persons to ‘reverse-engineer’ layout-designs for the purpose of analysing
the layout-designs and incorporating the insights of their analysis into an original layout-
design of their own. S. 18(3) states thatwhere a person, on the basis of scientific evaluation or
analysis of a registered layout-design, creates another layout-design which is original within
the meaning of sub-section (2) of section 7, that person shall have the right to incorporate
such another layout-design in a semiconductor integrated circuit or to perform any of the acts
referred to in sub-section (1) or sub-section (5) in respect of such another layout-design and
such incorporation or performance of any act shall not be regarded as infringement within the
meaning of sub-section (1).
Such a provision is considered to be justified, in accordance with Article 6(2)(b) of the IPIC
Treaty and the provisions in the TRIPS Agreement, as there is a need to encourage creativity
through the improvement of existing layout-designs. Moreover, to successfully enter an
integrated circuit market segment with a new product, the new entry must usually be
compatible with established products.However, the information needed to achieve
compatibility is often not publicly available. Thus, aspiring competitors must gather this
information another way. However, they must do so without infringing layout-design rights
under the Act.
Defence of innocence
S. 18(5) provides that where a person does not possess any knowledge or has no reasonable
ground to know while performing or directing to be performed such act in respect of such
semiconductor integrated circuit or article that it incorporated a registered layout-design, it
will not amount to infringement.
But, after the time when such person has received notice of such knowledge, if continues to
perform or directing to be performed such act then, he shall be liable to pay the proprietor of
the registered layout-design a sum by way of royalty. The amount shall be determined by
negotiation between registered proprietor of the registered layout-design and that person or
by the Appellate Board having regard to the benefit accrued to such person by performing or
directing to be performed such act.
Innocent purchaser
S. 18(6) provides that where any other person purchases a semiconductor integrated circuit
incorporating a registered layout-design or any article incorporating such a semiconductor
integrated circuit referred to in sub-section (5) from a person referred to in that sub-section,
then, such other person shall be entitled to the immunity from infringement in respect of that
semiconductor integrated circuit or article.
Independent creation
S. 18(8) where any person by application of independent intellect has created a layout-design
which is identical to a registered layout-design, then, any act of such person in respect of the
layout-design so created shall not be the infringement of the registered layout-design. Paper
trail evidence can be brought by such an independent creator to prove that his creation was an
exercise of “intellectual efforts” and it was not copied.
CASES
Brooktree Corporation v. Advanced Micro Devices
Brooktree had registered layout design and claimed that AMD copied their layout design.
Although, it was not copied entirely but Brook tree claimed that qualitatively material part
has been copied. Whereas, AMD claimed reverse engineering.
The US Court of Appeals for the Federal Circuit has held in the case of Brooktree
Corporation v Advanced Micro Devices that a ‘paper trail does not exclusively prove a
reverse engineering defence’ under the SCPA. The Court explained that the statute does not
excuse copying where the alleged infringer first tried and failed to reverse engineer a chip
layout without copying.
The Court rejected the claim that the reverse engineering defence can be established by the
sheer volume of paper, pointing that the paper trail is evidence of independent effort but not
incontrovertible proof of either originality of the end product or the absence of copying. The
registered-proprietor also has the exclusive right to import, sell or distribute for commercial
purpose any semiconductor chip products in which the registered layout-design is embodied.
Thus, the rights under the Act extend not only to the registered layout-design or chips
containing such registered layout-designs, but also over products containing such chips, e.g. a
watch or cell-phone.
 Nintendo Vs Centronics (Australia)

Nintendo, holds the EL rights in its video games. The defendant, Centronics, imported video
game circuits which were unauthorised copies of Nintendo's circuit layout which Nintendo
manufactured and marketed in regard to its game products. Nintendo initiated proceedings
against Centronics and three of its directors for infringement of various intellectual property
rights, including Nintendo's circuit layout rights. The chip was copied in entirety. Size of chip
copied was smaller than original layout design which was registered, so copied was
miniature.
The Court held such copying to be infringement. Only the size of the chip was minimized. It
was not an original work, as it was not result of creator’s own intellectual efforts.
CONCLUSION
The SICLD Act fulfills India’s obligation under the TRIPS agreement as approved by the
members of WTO. The intellectual property protection for Integrated Circuit layout design is
a key factor throughout the world, and more so in India because it does not have a strong
intellectual property protection policy in software. As integrated circuit layout designs is in
its early years in India, it’s important that the country boosts of a strong protection policy
right in the beginning itself and the SICLD Act provides such a strong protection policy.
The number of Indian companies focusing on integrated circuit design is beginning to grow
and this would force major semiconductor companies to set up their offices and address the
needs of the domestic market. This will encourage a lot more companies to base their
operations in India. The Indian legislation therefore provides a comprehensive protection to
the layout designs of the semiconductor integrated circuits as recognized intellectual property
and bundle of rights to the proprietor of the registered layout design.
 UTILITY ( CAPABLE OF INDUSTRIAL APPLICATION) SACHAN
Patent is granted for an “invention” – this is a universally accepted principle of patent law.
The patent specification describes the invention and if the application is granted by the Patent
Office, the patentee is entitled to exclusive rights over the “invention”. The grant of a patent
confers on the patentee exclusive right that often enable it to eliminate competition. Thus the
law seeks to ensure that such a monopoly is granted with caution and only where the patentee
is able to show that the product or process is truly worthy of such a monopoly.
Section 2(j) of the Patents Act, 1970 defines the term invention- “invention” means a new
product or process involving an inventive step and capable of industrial application”
 The invention must be a “product” or a “process”.
 In order to qualify as an invention, a product or process:
o Must be “new”; and
o Must involves an “inventive step”; and
o Must be “capable of industrial application”
The term “capable of industrial application “is defined under Section 2(ac) of the Patents
Act which states that “in relation to an invention, means that the invention is capable of
being made or used in an industry. It means enough to demonstrate utility. If we compare it
with novelty and non-obviousness (Not known to PHOSITA), we can say utility lies at
lowest pedestal. It is easiest to judge. Toughest factor hierarchy for patent requirement are-
novelty>non obviousness> utility. Words used are “capable of being used” rather than simply
“being used’. Thus, the patentee need not have actually used the invention in an industry to
satisfy this requirement.
Why we require utility?-

STATIC VIEW- According to it, two ques need to answered that why would one patent a
non-useful product as patenting is expensive exercise? If patent given to in order to exclude
other to use will it not be inconsequential as whom patentee will prevent as there wont be any
users as the invention was not useful at first place?
Suppose I make compound beta today and which is not known at present for medicinal value
but later can be used for medicines. So, problem which arise is that patent last 20 yr. So if in
gap of 20 yr, if someone come up with utility that same compound can have medicinal value
then he will not be able to use it, as he is excluded from use for 20 yrs. So in such case who
should be rewarded right of patents one person who comes with no utility value or one
who come up with useful product. In prior case if granted, then monopoly can be exercised.
Utlity can also be discovered at later time when compound discovered and earlier remained
unknown.
Utility is not a problematic area. But prob arise in chemical compound and biotech field. As
slight change in chemical leads to new unpredictable result.
Brenner v manson-

In this case, application of patent for making steroids was made by brenner. Later manson,
also comes up with claim he was first to make it. In USA, in inception days, first to invent
procedure followed for patent and not first to file, but patent office rejected his application as
he failed to show utility. Manosn to show utility referred to article of 1956 which showed
steroid being used in screening for cancer disease.
CCPA ( California Consumer Privacy Act) reversed decision and stated when claimed
product produces a prod it not necessary to show utlity unless not alleged detrimental to
public. Precedents were cited of ccpa decision

arguments by Manson are three and slide has two arguments-

1) that He demonstrated utility by reference by referring to article but court not accept
it as they article were undergoing screening. They may have potential of cancer treatment but
not specific utlity. Potential utility and specific utility are different.
2) He says can we say is it useful coz it work- as steroid formed so has utlity.court held
many things though useful but are also harmless. This runs contrary to idea that if trivial
inconsequential than cannot be granted patent.
If granted patent without utility, then monopoly also would extend on knowledge. So
Manson was denied patent as had no specific utility.
Pearson vs post- in this case both person go for hunting a Fox. Pearson chase fox while Post
kills it. Ques arose as to fox belonged to whom? Whether it belonged to post as he had
resource to shoot or pearson who was chasing it. Court gave in favour of post. So by this case
we seen one who has utility he gets patent.

Unfortunately, this definition of utility is not very helpful and not many Courts have dealt
with this issue in any detail. Leading case, Eli Lilly versus Human Genome Sciences Inc
summarizes the law as it stands today. According to it, -

“The notion of industry must be construed broadly. It includes all manufacturing, extracting
and processing activities of enterprises that are carried out continuously, independently and
for commercial gain. However, it need not necessarily be conducted for profit and a product
which is shown to be useful to cure a rare or orphan disease may be considered capable of
industrial application even if it is not intended for use in any trade at all.
The capability of industrial exploitation must be derivable by the skilled person from the
description read with the benefit of the common general knowledge.
The description, so read, must disclose a practical way of exploiting the invention in at least
one field of industrial activity.
An enquiry as to whether there is a sound and concrete basis for recognising that the
contribution could lead to practical application in industry. Nevertheless, there remains a
need to disclose in definite technical terms the purpose of the invention and how it can
be used to solve a given technical problem. Moreover, there must be a real prospect of
exploitation which is derivable directly from the specification, if not already obvious
from the nature of the invention or the background art. (SPECIFIC UTILTY)
Conversely, the requirement will not be satisfied if what is described is merely an
interesting research result that might yield a yet to be identified industrial application.
(POTENTIAL UTILITY)
A speculative indication of possible objectives that might or might not be achievable by
carrying out research is not sufficient. Similarly, it should not be left to the skilled reader to
find out how to exploit the invention by carrying out a research programme.
The purpose of granting a patent is not to reserve an unexplored field of research for the
applicant nor to give the patentee unjustified control over others who are actively
investigating in that area and who might eventually find ways actually to exploit it. If a
substance is disclosed and its function is essential for human health then the identification of
the substance having that function will immediately suggest a practical application.
If, on the other hand, the function of that substance is not known or is incompletely
understood, and no disease has been identified which is attributable to an excess or a
deficiency of it, and no other practical use is suggested for it, then the requirement of
industrial applicability is not satisfied.
Using the claimed invention to find out more about its own activities is not in itself an
industrial application.

The above quoted passage is a summary of both the US and the UK law on the subject. India,
in my view, is likely to follow similar trends.
 Novelty DEEPAK
The concept of invention forms the foundation of patent law. Section 2(1)(j) of the Patents
Act, 1970 defines the term invention in the following terms: “invention” means a new
product or process involving an inventive step and capable of industrial application.
Essential elements of section 2(1)(j) are as follows-
i. The invention must be a “product” or a “process”.
ii. In order to qualify as an invention, a product or process:
o Must be “new”; and
o Must involves an “inventive step”; and
o Must be “capable of industrial application”.

According to Section 2(1)(l), “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 the public domain or that it does not form part of the state of
the art.
Statutory exclusions
Apart from Section 2(j), Section 3 also provides guidance regarding the scope of the concept
of inventions. The Supreme Court in the now landmark case of Novartis AG versus Union of
India, categorized Section 3 of the Act into two parts: The Supreme Court found that
subsections such as (d) and (e) are ‘deeming’ provisions that “declare that certain things shall
not be deemed to be inventions”; other sub-sections of Section 3 such as (b) provide that even
though resulting from an invention, some things may not be granted a patent for “other
considerations”.
Section 3 declares that certain things – new forms of known chemical substances, process for
the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of
human beings, algorithms, mathematical methods, business methods, computer programmes
per se etc. – will not be considered as inventions even if they satisfy the requirements of
Section 2(j).
An invention has to pass through both these sections [section 2(j) and Sec. 3] to be eligible
for grant of a patent.
Why is Novelty required?
Patent shall not be issued if the effect is:
i. To remove existent knowledge from the public domain; or
ii. To restrict free access to the materials already available.
iii. To encourage early disclosure (it keeps the publicly known state of the art closer to
the tech and thus help others in the field to avoid wasting on a solution that has
already been achieved).

How to determine novelty

New is a relative term. New, compared to what? Section 2 (1)(l) creates a baseline – the date
of filing of the complete application, we then assess an invention’s novelty against this
baseline.
** The term ‘new’ is not defined by the Act. In these circumstances, one has to use the
common law meaning of the term to understand the meaning of the term new. A commonly
 used definition of “new”/ “novelty” is this – a claim is considered new if all the elements of
the claim cannot be found in a single prior art reference.
Prior art means everything made available to the public by means of a written or oral
description, by use, or in any other way, before the priority date of the invention. The most
commonly used prior art are written documents – both previously published patents and other
articles published in journals.
To destroy novelty of a claim, all the elements of the claim must be found in a single prior art
reference and thus combination of two prior art documents is not possible in the novelty
context.
Let’s take an example. An inventor felt that existing three – legged chairs were too unstable
and thus came up (for the first time) with a four – legged chair. A claim for a four-legged
chair can read as under:
“A device for resting comprising of a seating platform, four legs, a backrest and an armrest.”
The element of this patent are:
1. It is a device (a product patent) which must be used for resting.
2. It must have a seating platform.
3. It must have four legs.
4. It must have a backrest.
5. It must have an armrest.
Let’s say there is a prior patent that discloses three-legged chair having a seating platform, a
backrest and an armrest. Even though all other elements of our four – legged chair are known,
since element ‘3’ described above is missing from the prior art document, the claim on the
four legged chair can be considered ‘new’.
Now let’s say another patent discloses a four – legged stool which has a seating platform and
four legs. This patent alone does not make our four – legged chair not ‘new’. This is because
elements ‘4’ and ‘5’ of the chair identified above are missing from the four – legged stool.
One cannot combine the disclosures made in the patent relating to the three – legged chair
and the four legged stool to destroy the novelty of the four – legged chair. The law does not
permit this combination or ‘mosaicing’.
** Prior art must contain the following to negate patentability-
i. Anticipation’s identity
ii. Enablement requirement

Does the prior art describe or show each and every limitation of the claimed invention?
Does the prior art enable the PHOSITA to make the invention?
If the answer to both is YES then the reference defeats the claim’s novelty, i.e., prior art
anticipates the claim or the claim reads on the prior art.
Anticipation
In patent law, anticipation refers to the prior invention or disclosure of the claimed invention
by another, or the inventor's own disclosure of the claimed invention by publication, sale, or
offer to sell prior to the inventor's application for a patent. In other words, if someone else has
known about or used the invention before the patent applicant applies for a patent, that patent
applicant will not be entitled to a patent. Anticipation is a grounds for invalidating or
rejecting a patent because it means that the claimed invention lacks novelty.
The Indian Patents Act mentions what are not anticipations in Sections 29 to 34, rather than
defining anticipation. These are:
i. Anticipation by previous publication (Sec 29): If the invention has been published prior to
filing of the patent application, if the applicant or the patentee proves that the matter
published was obtained from him or any person from whom he derives title without his
 consent or the consent of any such person, then a complete specification filed shall not be
deemed to have been anticipated
ii. Anticipation by previous communication to the government (Sec 30): If the invention has
been communicated to the government or any person authorised by the government for the
purpose of investigation of the invention, then a complete specification filed shall not be
deemed to have been anticipated.
iii. Anticipation by public display (Sec 31):If the invention has been displayed in an
exhibition to which the provisions of the instant section has been extended by the Central
Government; or the invention is described in a publication in consequence of display of
the invention in such an exhibition; or the invention has been used by any person without
the consent of the true and first inventor or a person deriving title from him after it has
been displayed in such an exhibition; or disclosing the invention before a learned society
or publishing the invention in the transaction of such society; provided the application is
filed within 12 months from aforementioned public display, then a complete specification
filed shall not be deemed to have been anticipated.
iv. Anticipation by public working (sec 32): If the invention has been filed within 12 months
after the invention has been publicly worked for the purpose of reasonable trial
considering the nature of the invention, then a complete specification filed shall not be
deemed to have been anticipated.
v. Anticipation by use and publication after provisional specification (sec 33): If the
invention has been used and published after filing a provisional application, then a
complete specification filed shall not be deemed to have been anticipated.

Enablement requirement
A patent application is said to be enabled if the application provides sufficient details that
enable a person of ordinary skill in the related field to practice the invention. Related to this is
the 'best mode' requirement that arises in jurisdictions like the US and India: the patent
application must disclose the 'best mode' of carrying out the invention known to the
inventors. In other words, the patent application cannot hide the optimum conditions of the
invention from someone who tries to make and use the invention described in the patent.
The Enablement Requirement in TRIPS - Under Article 29(1) of the Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS), member countries must include a
requirement that patent applicants provide a disclosure that enables a person skilled in the art
to practice the invention. However, the requirement to disclose the 'best mode' is optional.
Enablement in India- Section 10(4) of the Patents Act, 1970 require disclosure of the 'best
mode' of carrying out the invention as known to the inventor.
ILLUSTRATIVE CASES
On principle of novelty
Titanium Metal Corp. of America v. Banner, 1985
Titanium Metals Corp (TMC) filed a patent for a new type of titanium alloy to use in offshore
oil wells. The USPTO rejected the patent. USPTO found that the patent was anticipated by a
Russian scientific article. the USPTO found that if 'someone skilled in the art' had read the
article, then it would be pretty obvious for them to have come up with TMC's alloy.
Therefore the patent should be denied because of a lack of novelty.
TMC appealed. The Trial Court reversed and order the patent granted. The Trial Court found
that while the Russian scientists had clearly made the alloy, the article did not discuss the
alloys' improved corrosion resistance (so it couldn't be said that the prior art had fully
anticipated the patent).
USPTO appealed. The Appellate Court reversed and denied the patent. The Appellate Court
found that reading the Russian article would let someone know that the alloy exists, what its
general properties are, and how to make it. Therefore the alloy cannot be considered "new." It
existed in the prior art. The Court found that even if the Russian article didn't talk about every
single useful property of the alloy, it still enables. TMC didn't discover a new product, they
discovered a new use for an old product.
On what is printed publication?
In re Klopfenstein, 2004
FACTS: Appellant applicants Carol Klopfenstein and John Brent sought a patent for methods
of preparing foods comprising extruded soy cotyledon fiber. In 1998, which was nearly two
years before they filed their application, the applicants had presented a printed slide
presentation at a meeting of chemists and at a university. The presentation was displayed
continuously for two and a half days and one day, respectively. Every limitation of the
invention was disclosed in the presentation. Although no copies of the presentation were
disseminated, there was no prohibition on note-taking or copying. Only a few slides recited
what was not already known in the field. The presentation was never catalogued or indexed in
any library or database.
Patent application was rejected because that the full invention was made publicly accessible
to those of ordinary skill in the art and that this introduction into the public domain via
printed display represented a "printed publication". The applicants sought further review.
Held - In affirming the Board's decision, the United States Court of Appeals for the Federal
Circuit held that, because the presentation had been made publicly accessible, it constituted a
printed publication. The Liu reference was shown for an extended period of time to members
of the public having ordinary skill in the art. Those members of the public were not precluded
from taking notes or even photographs of the reference. Accordingly, the Court concluded
that the Liu reference was made sufficiently publicly accessible to count as a "printed
publication".
In re Cronyn, 1989
Fact - The student presents the thesis to a Thesis Oral Board, composed of four faculty
members including the student's faculty sponsor and another faculty member from the
student's department. In neither the main library nor the chemistry department library are the
theses generally indexed or cataloged. They are not assigned catalog numbers.
It was held that thesis presentation made to a handful of faculty and not catalogued or
indexed in a "meaningful" way was not a printed publication.
In re Hall, 1986
FACTS: The patent application included a copy of a doctoral thesis that was found to have
been available as a printed publication more than one year prior to the application's filing
date. The thesis was indexed and placed in the main collection at Freiburg University in
Germany. The application was rejected. Appellant sought review.
Held - The court held that the doctoral thesis at issue was available as a printed publication, a
single catalogued copy constituted sufficient accessibility under the statute.
Massachusetts Institute of Technology v. AB Fortia, 1985
Facts- In September, 1975, MIT research team delivered an oral presentation in Birmingham,
Alabama, printed copies of which were distributed to a number of scientists (the
"Birmingham paper"), which indicated that optimal cell adhesion and growth could be
obtained by reducing the total charge capacity of microcarriers such as the A-50 beads. The
MIT group filed a patent application covering the development of limited-charge cell culture
microcarriers in November, 1976.
Held - It was held that a paper that was orally presented and distributed without restriction to
six people constituted a "printed publication".
In re Wyer, 1981
Facts: On March 13, 1972, appellant filed Australian Patent Application. The entire
application was open to public inspection by the Australian Patent Office and a printed
abstract thereof was published. A microfilm copy of the Australian application preserved in
the Australian Patent Office as a security reel. Diazo copies were also available for sale to the
public upon application to the Australian Patent Office. The disclosure of the instant U.S.
application corresponds to that of the Australian application.
Held – It was held that the microfilm of the Australian application meets the "printed"
requirement, where microfilm copy was available to the public at patent office and abstract
was published. It was further observed that a reference is proven to be a “printed publication”
“upon a satisfactory showing that such document has been disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the subject matter or
art, exercising reasonable diligence, can locate it.
On what is public use
Beachcombers v. Wildewood Creative Products, 1994
FACTS: Carol Bennett, a third party and the designer of prototype kaleidoscope called
"Odylic," hosted a party for 20 to 30 guests on April 12, 1985. At her party she displayed and
personally demonstrated the Odylic to her friends to solicit feedback on the device. Bennett
had "made no efforts to conceal the device or keep anything about it secret."
Held - It was held that a demonstration of a working invention in front of twenty to thirty
guests at a house party, all of whom lacked an obligation of secrecy regarding the invention,
constituted public use.
 Microorganisms
INTRODUCTION
A microorganism is a microscopic organism, known to be one of the earliest life forms on
earth. Viruses, fungi, bacteria, archaea, protozoa and algae are the six major forms of
microorganisms, exploited expeditiously by the biotechnologists and micro-biologists for
research purposes.
The Indian Patents Act, 1970 added microorganisms under the purview of patentability
through the Patents (Amendment) Act, 2002, in compliance with the TRIPS. According to
Section 3(j) of the Patents Act, 1970, a plant, animal, seeds and biological processes, apart
from microorganisms are not patentable. Therefore, section 3(j) of the Indian patents act,
allows patentability of microorganisms.
Article 27(3)(b) of the TRIPS 1994, further established that microorganisms and non-
biological and microbiological processes are patentable by stating that, "Members may also
exclude from patentability, 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."

In the light of Article 27 of TRIPS the Section 3 of Patent Act, 1970 has been amended. The
definition of invention, new invention, inventive step reflects restrictive approach to the legal
protection of living materials. In the absence of definition for plant, animal, micro organism
essentially biological process, non-biological process and plant variety its interpretation by
the patent office becomes crucial. Since the term micro-organism can have a variety of
definition which may not be exhaustive to include genetic material, it is argued that it is safer
to place reliance upon the guiding provision in TRIPS agreement.
'Microorganisms per' se can be patented, however, it should be noted that a patent is not
granted for a discovery rather for an invention which is novel, non-obvious, useful and
capable of industrial application. Therefore, a patent can only be granted for a micro-
organism, when there's a human intervention to create a new, non-obvious and useful
microorganism by way of genetic modification/engineering, cell fusion, gene therapy or other
micro-biological or non-biological techniques.
In India, the position was made clear after the 2002 amendment to the Indian Patents Act.
The amended act stated that life forms can be patented provided they satisfy the other
requirements. The improvements in the Indian patent regime have resulted in a significant up
thrust in the promulgation and enforcement of patents in India. Now, India can boast of one
of the best patent law regimes in the world.
The Mashelkar committee report has clearly stated that microorganisms are patentable
subject matter in India. Inventions pertaining to Microorganisms and other Biological
material were subjected to product patent in India, unlike many developed countries. But with
effect from 20.05.2003 India has started granting patents in respect of invention related to
microorganisms, though India was not obliged to introduce laws for patenting
microorganisms per se before 31.12.2004.
GENESIS OF THIS CONCEPT OF PATENTABILITY

The case of Diamond v. Chakrabarty1 in 1980s, opened gates for the patentability of
microorganisms, wherein the claim of a Micro-biologist Dr. Ananda Chakrabarty, for the
grant of patent for a live human made & genetically engineered bacterium, capable of
breaking the components of crude oil was accepted by the US Supreme Court. In this case,
the controller of patents of the United States denied the claim for patenting the bacterium per
se, stating that, microorganism are product of nature and hence are non-patentable according
to the US patents regime, which was reversed by the United States Court of Customs and
Patent Appeals.
Dejected by the decision of the US court of Customs and Patents Appeal, Sideny A.
Diamond, the commissioner of Patents and trademarks appealed to the US Supreme
court2 which again went in favour of Chakrabarty by establishing that a human made,
genetically engineered bacteria was capable of treating oil spills and thus was an invention
accompanied by novelty, usefulness, utility, non-obviousness and industrial applicability 3,
which a naturally occurring microorganism was incapable of.
Before the US Supreme Court's decision in the case of Diamond v. Chakrabarty, Patent
protection was not granted to microorganisms as product claims, but only to the process
claims in which microorganisms was used as a medium in inventions.

Another decision which apparently rejected the "product of nature" doctrine is Merck & Co.
v. Olin Mathieson Chemical Corp.
the inventors claimed a patent for vitamin B-12 active compositions which had been
extracted from the fermentation products of a certain strain of fungi.
The District Court held the claims to be invalid.
The Court of Appeals held that the activated B12 compositions were new and useful
"compositions of matter." Further, the Court of Appeals held "There is nothing in the
language of the Act which precludes the issuance of a patent upon a 'product of nature' when
it is a 'new and useful composition of matter'.
In re Bergy, the applicant invented a process for the production of a familiar antibiotic,
lincomycin, and, while doing so, discovered a previously unknown microorganism which he
called Streptomyces vellosus ("Sv"). Bergy filed both "process" and "product" claims with
the PTO. The patent examiner rejected Bergy's "product" claim as being directed to a product
of nature. 3 The PTO Board of Appeals upheld the rejection on the sole ground that the claim
covered a "living organism."
The opinion of the three-judge majority stated that there was clear legal precedent for
patenting a purified product of nature, which is precisely what Bergy had argued. The Court
cited two cases for its position: Merck v. Olin Mathieson Chemical Corporation and
ParkeDavis v. Mulford. Having established a basis for allowing a patent on purified
products of nature, the Court saw one remaining issue: Was a purified product of nature,
otherwise patentable under Section 101 of the patent law, disqualified because it also
happened to be alive? For three of the five judges, the answer was “No”. The Court appears
to have been mindful of the warning issued by the Board of Patent Appeals about the
potential consequences of opening the patent door too wide to living things. The majority
took pains to note that it was not deciding if living things in general qualified under Section
101 of the Patent law, but only whether microorganisms did.

Harvard college vs Canada comptroller- ONCOMOUSE CASE

Researchers at Harvard Medical School in the early 1980s produced a genetically modified
mouse that was highly susceptible to cancer, by introducing an oncogene that can trigger the
growth of tumors. The case raised general ethical issues regarding transgenic technology in
itself. But it also raised two key issues for the patent system:

 should patents be granted at all for animals or animal varieties, particularly for higher-
order animals such as mammals, even if they do otherwise meet patentablility criteria
(novelty, industrial applicability/usefulness, inventive step etc.)?
 how should moral implications be addressed in relation to specific cases, e.g. the
question of suffering caused to the transgenic animal?
In Canada, the patent examiner initially rejected claims to transgenic animals on the basis that
they were not included in the definition of an invention, but allowed claims on the process for
obtaining the oncomouse.
The Supreme Court of Canada finally ruled in 2002 that higher life forms were not patentable
because they were not a "manufacture or composition of matter within the meaning of
invention" of the Patent Act **. Manufacture was interpreted as a non-living mechanistic
product or process. "Composition of matter" was understood as ingredients or substances that
had been combined or mixed together by a person. So while microorganisms, or an
oncogene-injected egg capable of maturing into an oncomouse, may be a mixture of
ingredients and thus patentable under Canadian Law, the body of a mouse was not.
Moreover, the drafters of the Patent Act (1869) had not had mammals in mind and so the Act
did not address higher life forms. It was recommended that, as the patentability of such life
forms was contentious, the Parliament should engage in public debate to address the complex
social and moral issues and close the legislative gap.

The landmark judgment of the Calcutta High court in the case of Dimminaco A.G. v.
Controller of Patents & Designs on 15th January, 2001, prior to the 2002 amendment in the
patents act, 1970 established a benchmark in the field of micro-biological research. In this
case, an appeal was filed against the Assistant Controller of Patents & Designs, wherein, the
process for preparation of infectious Bursitis Vaccine was refused on the grounds that the
process of preparation of vaccine that contained a living virus cannot be considered
manufacture and that a vaccine comprising of a living virus cannot be considered a substance
or inanimate object. The court in this case reversed the decision of the Assistant controller
and held that, the process of preparing a vendible commodity containing a living substance is
not excluded from the purview of the word, ‘manufacture’ and that the controller erred in
denying patent protection to the vaccine just because it contained a live virus. Furthermore,
the end product was novel, capable of industrial application and was useful for protecting
poultry against contagious Bursitis infection, thus making the process an invention. The court
further allowed the appeal and directed the petitioner’s patent application to be reconsidered
within two months of the publication/delivery of the judgement.
(go to sachan notes MO5) In the recent Supreme Court’s judgment in the case of, Monsanto
Technology Pvt. Ltd. v. Nuziveedu Seeds, The plaintiff (Monsanto) claimed that their patent
in the man-made, chemical product called NAS(Nucleotide Acid Sequence) containing the
gene Bacillus thuringiensis (Bt gene), capable of killing bollworms when inserted in cotton,
was not an infringement under section 3(j) of the patents act, 1970, as held by the Division
bench of the Delhi High Court. Nuziveedu’s claim was that, NAS was merely a chemical
composition in-capable of reproduction and not a man-made inventive microorganism,
capable of industrial application[vii]. The Supreme Court in this case set aside the order of
the division bench and restored the order of the single bench and reverted back the matter
back to the single bench of the Delhi High Court to be decided on the basis of expert advice
and evidence, who had held that, the claims on NAS was rightly entertained by the Indian
Patent office and that the parties shall remain bound to their sub-lease agreement.

Conceptual issues
India has allowed patenting of microorganisms but the Patent Act does not provide a
definition of the term Microorganisms. This has led to many debates regarding patentability
of microbes. In the absence of clear definition of microorganism and microbiological process
in the TRIPS agreement, the country needs to draw a distinctive line between the product of
human intervention leading to novelty and those freely occurring in nature.
Dimminaco case: a case in the point: Although the Indian Patent Act, 1970 does not permit
patenting of microorganisms, per se, this particular case at Calcutta High Court is a case to
understand the intricacies of patenting. Dimminaco Case 2 clarified the position relating to
patentability of biotechnology inventions, particularly in a case where a process of
manufacture of vaccine involving a living end product was involved.
The main issue in contention between the parties was whether the phrase 'method of
manufacture' used in section 2(1) (j) could be said to include a live organism. The court, in its
positive affirmation, has held that the dictionary meaning of 'manufacture' did not exclude
from its purview the process of preparing a vendible commodity that contains a living
organism.
Another concern is that if the inventive step is going to be interpret by considering only
technical advance or economic significance, then standard of patentability gets lowered and
the same should not be allowed. Because these factors has been used as secondary
considerations and they never served as a basis for establishing inventive step.

Conclusion:
The micro-organisms with human interventions, accompanied by novelty, utility and
industrial applicability are patentable. The technological advancements in the field of micro-
biology, genetics, etc., have complicated the issues relating to patents in microorganisms.
Therefore, scientific aspects and legal drafting of the invention should be done with due
precaution and consideration. Further even though, the issues involved in the Monsanto's case
was highly technical, The Supreme Court missed its opportunity in deciding upon the facts in
issue8.
Non obviousness / Inventive Step

Introduction :
Non-obviousness of the invention is one of the three desiderata for the grant of Patent, others
being novelty and industrial application. Simply put nonobvious as a patent term means that
the invention shall not be obvious or apparent to a person ordinary skilled in the field relating
to the invention. Basically the invention shall contain an inventive step over the prior art. It
should not be mere a workshop improvement or general re-arrangement of components /
features of the invention.
This test of non-obviousness is to be made with the perspective of a person having ordinary
skill in the art i.e. having average skills, and not an expert in that technology. The test is very
essential and subjective too, while deciding the inventive step the adjudicator needs to assess
the "inventive step" on the scale and parameters of a person ordinarily skilled in that art.

Non-obviousness and the patent act, 1970 :

The Patents Act, 1970 of India specifies the provisions that are used by the Indian Patent
Office and the courts to determine whether a product or a process is worthy of a patent in
India. The Act, vide Section 2(1)(m), provides that a patent may be granted for an
“invention”. Further, the definition of “invention” is provided under Section 2(1)(j) of the Act
as a new product or process involving an inventive step and capable of industrial application.
As per the definition of inventive step as set out u/s 2(1)(ja), a feature of an invention can be
considered to possess an inventive step if it satisfies two conditions : (i) the feature either
adds to existing technical knowledge, i.e., the prior art, or is substantially better in terms of
commercial viability; and (ii) it makes the invention non-obvious to a person skilled in the
art.
If an invention lacks the presence of an inventive step, then, this deficiency can be considered
as valid grounds for opposition for the grant of a patent, under section 25 (1)(e) and 25 (2)(e)
and for revocation under section 64 (1)(f) of the Act.

Need for non-obviousness :

1. It would be Unjust in principle and injurious in consequence if non-obviousness or
inventive step would be absent.
2. It would be socially wasteful for us to pay for an invention which we are certain to
receive for free and in about the same amount of time.
3. Additional cost – other artisans would be transferred to consumers with no such
invention that would otherwise would not have happened.
4. Patent liability would be narrowed down to a copying based standard with full
defence of independent creation from the current use-based standard with no defence
for independent creation.

Assessment of Inventive Step :

If, a product or a process is novel, the next question that arises is "Is the approach obvious
and if it not then what is the depth of the inventive measures taken by the inventor”. To
determine obviousness is to find out whether the person, with ordinary skill in the art, would
have come up with similar innovation for the technical problem under similar circumstances
without being provided with the solution.

Since the Patents Act (1970) was brought into force, The Supreme Court held that
obviousness has to be strictly and objectively judged. The Supreme Court of India in M/s.
Bishwanath Prasad Radhey Shyam Appellant v. M/s. Hindustan Metal Industries, laid down
the importance of assessing inventive step, as below-
"It is important that in order to be patentable an improvement on something known before or
a combination of different matters already known, should be something more than a mere
workshop improvement; and must independently satisfy the test of invention or an 'inventive
step'. To be patentable the improvement or the combination must produce a new result, or a
new article or a better or cheaper article than before. The combination of old known integers
may be so combined that by their working interrelation they produce a new process or
improved result. Mere collection of more than one integers or things, not involving the
exercise of any inventive faculty, does not qualify for the grant of a patent."

Cases :
I. Hotchkiss v. Greenwood
FACTS:
Plaintiffs filed an action against defendants alleging that the latter infringed the plaintiffs’
patent right for a new and useful improvement in making door and other knobs of all kinds of
clay used in pottery, and of porcelain. The court instructed the jury that if knobs of the same
form and for same purposes had been known or used in the United States prior to the alleged
invention and patent of the plaintiffs, and if there was no ingenuity or skill necessary to
construct such knob than that of an ordinary mechanic acquainted with the business, the
patent was void, and the plaintiffs were not entitled to recover. The jury returned a verdict in
favor of the defendant. Plaintiffs appealed.

Issue.
If a patent only improves an old device by substituting different materials, is it valid?

Held. -
No.

The Supreme Court affirmed a judgment finding for defendant after refusing to give a
particular jury instruction as requested by plaintiffs in an action alleging infringement of
plaintiff's patent right for a new and useful improvement in making door and other knobs of
all kinds of clay used in pottery, and of porcelain. A patent that only improves an old device
by substituting different materials that are better suited to the purpose of the device is not
valid. The clay or porcelain knobs manufactured by Plaintiff may have been more durable by
fastening the shank to the knob, but the effect would be the same in knobs made of wood, and
the method was already known and used commonly with wooden knobs
The Court noted that the application of an old machine to some new purpose is not the
foundation of a patent; but an improvement of an old machine, in order to apply it to the same
purposes more advantageously, is the subject of a patent. The difference was formal and
lacking of ingenuity or invention. The improvement was the work of the skillful mechanic,
not that of the inventor. Therefore, there was no patent infringement.

II. Reckendorfer v. Faber

Facts - Hymen L. Lipman (March 20, 1817 – November 4, 1893) is credited with registering the
first patent for a pencil with an attached eraser on March 30, 1858. In 1862, Lipman sold his
lead-pencil and eraser patent for $100,000 to Joseph Reckendorfer, who went to sue the pencil
manufacturer Faber for infringement.
Argument presented - patentee argued that the court did not have the authority to review a
decision by the Patent Commisisoner to accept an invention for patent registration.

Issue - Whether the uniting of two implements in a common handle or holder constitutes
patentable invention

Held –
 The decision of the Commissioner of Patents in the allowance and issue of a patent
creates a prima facie right only; and, upon all the questions involved therein, the
validity of the patent is subject to examination by the courts.
 A combination, to be patentable, must produce a different force, effect, or result in the
combined forces or processes from that given by their separate parts. There must be a
new result produced by their union; otherwise it is only an aggregation of separate
elements.
 A combination, therefore, which consists only of the application of a piece of rubber
to one end of the same piece of wood which makes a lead-pencil is not patentable.

the Supreme Court of the United States ruled against Reckendorfer, declaring the patent
invalid because his invention was actually a combination of two already known things with
no new use.

III. Cuno Engineering v. Automatic Devices Corp

Facts - Before a patent was attempted to be obtained by Mead, patents for cigarette
lighters in automobiles already existed. The first patent was owned by Morris, who
invented the lighter and its functions in automobiles. Metzger then patented the
wireless automobile lighter. Mead looked to patent his wireless lighter which
automatically ejected once it was hot enough. His use of a thermostat made the
automobile lighter easier and safer to use.

Issue - The question in the case was whether or not applying technology that already
exists to a patented product is means for a patent. The court requires patents to
have the elements of a “flash of genius”. The thermostat technology had existed for
years in things like furnaces. The question for the Supreme Court was whether or
not Mead’s invention was a flash of genius or was he merely applying an art to an
already patented item.

Held -
Mead's addition to the so-called wireless or cordless lighter of a thermostatic control-which,
after the plug was set "on" and the heating coil had reached the proper temperature,
automatically returned the plug to its "off" position-was not invention but a mere exercise of
the skill of the calling, and an advance plainly indicated by the prior art.
That Mead's combination performed a new and useful function did not make it patentable.
The new device, however useful, must reveal the flash of creative genius, not merely the skill
of the calling
Hence, The Supreme Court ruled that Mead did in fact infringe on previous patents because
the addition did not involve a flash of genius and merely applied an art.
IV. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Co.

Facts. The device patented by Plaintiff equipped cashiers’ counters with a three-sided frame
that moved the groceries along to the cashier by being pushed or pulled when the customer
put their groceries within it. The district court denied Defendant’s claim that the device was
obvious and therefore could not be the subject of a patent, must less an infringement suit. The
court found it was an original feature, and consisted of a new and useful combination of a
counter with an extension to receive the items that were placed upon a bottomless self-
unloading tray. The judgment was upheld by the court of appeals regarding the finding of the
district court as to obviousness as one of fact and not clearly incorrect.
Issue. If portions of prior art are merely brought together by a patentee, without any change
in their particular functions, will the patent be sustained?

Held. If portions of prior art are merely brought together by a patentee, without any change in
their particular functions, the patent will not be sustained. The combination of known
elements must contribute something; only when in some way the whole exceeds the sum of
its parts is the combination of old devices eligible for patent. In this case, each part is doing
what it has always done. The counter supports merchandise; the rack draws or pushes goods;
and the guide rails keep the goods from falling off the surface. When two and two are added
together, the total is still four. The Plaintiff’s patents have not added anything new to the total
stock of knowledge, but merely brought together parts of prior art claiming them in working
together a monopoly. The patents are invalid and judgment is reversed.

V. Graham v. John Deere Co

The framework used for determining obviousness is stated in Graham v. John Deere Co.
Thus, every obviousness determination must first start with the Graham factors as the
analytical tool.

Facts: Graham invented a new shock absorber to add to tractors, essentially a device
designed to absorb shock from the shanks of chisel plows as they plowed through
rocky soil and thus prevented damage to the plow. Graham obtained a patent (US Patent
2,493,811) on this device.
Shortly thereafter, Graham made an improvement on this device and applied and obtained a
patent (US Patent 2,627,798) for the improvement. Only 2 differences existed between the
two patents, them being: the stirrup and the bolted connection of the shank to the hinge plate
did not appear in 2,493,811 and the position of the shank was reversed, being placed in
2,493,811 above the hinge plate, sandwiched between it and the upper plate.
A little later, Deere was sued by Graham for patent infringement, since Deere started using a
device similar to the device patented in the improvement patent of Graham. Deere argued that
Graham’s patent on the improvement was invalid because it failed the test for non-
obviousness.
Held : The Court found that the improvement was obvious and the patent was invalidated.
The factual inquiries – the Graham factors – that make up the initial obviousness inquiry are
as follows:
(1) Determining the scope and content of the prior art

In determining the scope and content of the prior art, it is necessary to achieve a thorough
understanding of the invention to understand what the inventor has invented. The scope of the
claimed invention will be determined by giving the patent claims submitted the broadest
reasonable interpretation consistent with the overall articulation of the invention.

(2) Ascertaining the differences between the claimed invention and the prior art

Ascertaining the differences between the claimed invention and the prior art requires
interpreting the claim language, and considering both the invention and the prior art as a
whole.

(3) Resolving the level of ordinary skill in the pertinent art.

The person of ordinary skill in the art is a hypothetical person who is presumed to have
known the relevant art at the time of the invention. It is necessary to determine who this
hypothetical person is because the law requires that the invention not because the law – 35
USC 103 – seeks to determine whether “the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill in the art…” So
this hypothetical person of ordinary skill in the art is central to the inquiry.
Factors that may be considered in determining the level of ordinary skill in the art may
include: (1) Type of problems encountered in the art; (2) prior art solutions to those
problems; (3) rapidity with which innovations are made; (4) sophistication of the technology;
and (5) educational level of active workers in the field. In a given case, every factor may not
be present, and one or more factors may predominate.

(4) Secondary considerations of non-obviousness.

In addition to the aforementioned factual inquiries, evidence that is sometimes referred to as
‘‘secondary considerations’’ or “objective indicia of non-obviousness,” must be considered.
Essentially, secondary considerations are a reality check on the determination reached
through the first 3 factual inquiries. In other words, the invention may appear on paper to be
obvious, but if reality does not match theory then the invention can be established as being
non-obvious.
Evidence of secondary considerations may include evidence of commercial success, long-felt
but unsolved needs, failure of others, copying by the industry and unexpected results. If you
are paying attention you notice that I mentioned unexpected results above. This is an
important linchpin because unexpected results comes up as a secondary consideration and
whether the combination of elements produces an predicted result or outcome plays a central
role in the post-KSR obviousness determination

VI. TSM Test

Required to prove a claimed invention would have been obvious, one must prove that the
prior art as a whole would have suggested the invention to one skilled in the art.
The Test basically says that a patent claim is only proved obvious if some motivation or
teaching to combine the prior art teachings can be found in the prior art, the nature of the
problem or the knowledge of PHOSITA.
TSM test is the Teaching, Suggestion and Motivation test. It simply means, when analysing
the obviousness of an invention while comparing it with prior art, these are the three
questions that have to be asked:
Is the prior art quoted instrumental in teaching the reader the method of producing the
invention?
Does the prior art or any of its contents suggest any method of producing the invention in
question?
Does the prior art talk about problems related to a particular technology motivating an
invention in a particular manner?
Courts have defined what is not patentable: inventions that do not make a sufficient leap
(iterations beyond the first order), or more specifically, those inventions that are
obvious. Determining obviousness by assessing a sufficient leap is subjective. To cut down
on the variability of this determination, obviousness is evaluated from the perspective of a
Person Having Ordinary Skill in the Art (PHOSITA).
An invention therefore is obvious, and therefore not patentable, if a PHOSITA would find
that the leap was insufficient to make the invention non-obvious.
This prevented hindsight from creeping into the inquiry, which was critically important
because on some level everything is obvious once you know about it.

VII. KSR International v Teleflex

FACTS
Teleflex is the exclusive licensee of the Engelgau patent (the '565 patent (Claim 4)) directed
to an adjustable vehicle pedal assembly that allows the driver to adjust the position of the

pedal to provide greater driving comfort. The pedal assembly includes an electronic pedal
position sensor attached to a support member of the pedal assembly. A characteristic feature
of the Teleflex pedal lies in its fixed pivot position.
KSR developed an adjustable pedal system for cars with cable-actuated (mechanical) throttles
and obtained a patent for the design. GMC chose KSR to supply adjustable pedal systems for
trucks using computer-controlled throttles. To make the KSR pedal compatible with the
trucks, KSR added a modular sensor to its design.
After learning of KSR's design for GMC, Teleflex sued for infringement, asserting that the
KSR pedal infringed claim 4 of the '565 patent.

DISTRICT COURT PROCEEDINGS

KSR responded to the suit by asserting that claim 4 of the Engelgau patent was invalid as
being obvious over the prior art. The District Court agreed, granting summary judgment to
KSR and holding claim 4 invalid (i.e., meaning that there where no material issues of fact in
dispute, and that the court found claim 4 to be obvious over prior art and therefore invalid as
a matter of law - without submitting the question of obviousness to a jury).
The District Court relied on prior art references that individually taught: (1) an adjustable
pedal assembly having a fixed pivot (the Asano reference); (2) electronic sensors installed on
a non-adjustable pedal assembly (the Byler and White references); and (3) that it was
desirable to install sensors on a fixed rather than a moving portion of a non-adjustable pedal
assembly to avoid damage to surrounding wires (the Smith and Rixon references).

In applying the Graham factors, the District Court found "little difference" between the prior
art and the broadly claimed invention, and held that the invention was an obvious
combination of features already well known in the art. In this regard, the District Court
determined the level of ordinary skill in pedal design to be a person having an undergraduate
degree in mechanical engineering (or an equivalent amount of industrial experience) and
familiarity with pedal control systems for vehicles.
Applying the TSM test, the District Court concluded that one of ordinary skill in the art
would have been motivated to combine the prior art references based on the nature of the
problem to be solved, as indicated by the teachings of the prior art references and the state of
the industry at the time of the invention.

SUPREME COURT RULING

The Supreme Court:
reversed the Federal Circuit and explicitly rejected a strict application of the TSM test.
Considering the Graham factors and drawing upon its own earlier decisions (United States v.
Adams (1966), Anderson's Black Rock v. Pavement Salvage (1969) and Sakraida v. Ag Pro
(1976)), the Court:
concluded that a claim is likely to be obvious if it recites nothing more than (i) the use of
known elements; (ii) according to their established functions; (iii) to achieve predictable
results.
The Court did not reject the TSM test outright, but did expand the available sources of
teaching, suggestion or motivation. Courts, and presumably patent examiners, must now
consider:
the interrelated teachings of multiple patents (inference); the effects of demands known to the
design community or present in the marketplace; and the background knowledge possessed
by a person having ordinary skill in the art.
Particularly, the Court stressed the importance of: market demands as a source of suggestion
or motivation.

FOUR ERRORS OF FEDERAL CIRCUIT

1. Error to look only at the problem that the patentee tried to solve

The Federal Circuit erred by limiting its search for a suggestion or motivation relating to the
specific problem addressed by the patentee. In contrast, the Court held that, "any need or
problem known in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the matter claimed."
2. Error to assume a person of ordinary skill attempting to solve a problem will only be
led to prior art designed to address that same problem
The Federal Circuit erred by assuming that a person of ordinary skill in the art would be
motivated only by prior art designed to solve exactly the same problem. Instead, the Court
noted that, "familiar items may have obvious uses beyond their primary purposes."

3. ”Obvious to try" can be a valid way to show obviousness

The Federal Circuit erred in holding that a patent claim cannot be proven obvious by showing
that its subject matter was "obvious to try." On the contrary, the Court held that, "[w]hen
there is a design need or market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason to pursue the
known options within his or her technical grasp.”

4. Cannot have rigid rules that deny common sense

The Federal Circuit erred in concluding that a rigid application of the TSM test was necessary
to prevent hindsight bias by reviewing courts and patent examiners. The Court noted that
hindsight bias should be avoided, but rejected the necessity of rigid and inflexible rules.
 Short answers by Arpit :P
1. Deposit Requirements under parents act
https://www.mondaq.com/india/patent/550908/provisions-governing-the-deposit-of-
biological-material-under-indian-patents-act
2. Law of Functional Design
IP Laws are not wary of overlapping in their forms and the same has been observed and
discussed since their inception. Consequentially, no fine line can be drawn between various
facets of Intellectual Properties accruing to striking similarity in their inherent nature and the
aspects they deal with. The overlap between industrial designs and the patentable nature of
functionality of those designs has been a conundrum that has been an area of dispute in
various jurisdiction.
In the case of Cow and Coy v Cannon Rubber Manufacturers from England, the
dysfunctionality of functional Designs has been discussed to some extent, wherein the fact
that a particular design could not be judged solely by viewing and the suit for design
infringement would not hold good because the design was functionally inspired and that the
design includes a method of construction. It was however denied saying:
It is to be noted that the statutory objection does not extend to a method or principle of
construction whereby the design is applied to an article. It is only in cases where the design
can fairly be treated as itself covering such a method or principle that the objection is
applicable. This can be tested by posing the question whether a method or principle” of
construction is possible of performance only by applying the registered design, or one not
materially differing from it, to an article.
Even though, the above mentioned case set a precedent in terms of approaching functional
designs, the interpretation of Design Law in the UK and India has not attained much clarity
with respect to exclusion of functional designs as even the law does not draw a fine line in
this respect. The definition of “designs” in Section 2(d) of the Designs Act, 2000 requires the
“design” to be judged solely by the eye but specifically excludes “any mode or principle of
construction or anything which is in substance a mere mechanical device”. Courts in UK that
follow the EU directives on Design, have at times rejected the multiplicity of forms theory
and banked upon “no aesthetic consideration theory” which rests upon the idea that the author
had in mind and whether or not it was solely judged by functionality, thereby meaning
whether the author had other aspects of design in mind even if that design embodies function
that may not be achieved by means of any other form. Different member countries of the EU
interpret the law in different manners. The most recent case law PepsiCo, Inc. v Grupo
Promer Mon Graphic SA , however tried to resolve this conundrum in a close to successful
manner acknowledging that, “…in so far as similarities between the designs at issue relate to
common features, those similarities have only minor importance in the overall impression
produced by those designs on the informed user. In addition, the more the designer’s freedom
in developing the contested design is restricted, the more likely it is that minor differences
between the designs at issue will be sufficient to produce a different overall impression on the
informed user”; thereby, accruing reasonable credit to an informed user/customer and
denying the multiplicity of forms approach, in case two designs form a similar impression on
an informed user. In India, in the case of Carlsberg v Som Distilleries the anomaly was
approached in the following words:
“Normally, designs which are purely functional cannot be protected or form the basis for an
action for infringement. A functional shape and configuration, which is dictated solely by the
functionality, is not registrable under the Design Act as a design. The learned Judge referred
to the observation of Lord Reid, J. in Amp. Inc. vs. Utilux Pty. Ltd. 1972 RPC 103 wherein
the learned Lord observed, “……….and the words ‘judged solely by the eye’ must be
intended to exclude cases where a customer might choose an article of that shape not because
he thought that the shape made it more useful to him”.
In yet another judgment in Whirlpool of India v Videocon Industries,5 it was addressed
saying:
“For a defense of functionality to succeed, it is not enough to say that the form has some
relevance to the function. If a particular function can be achieved through a number of
different forms, then a defense of functionality must fail. For the defense of functionality to
succeed, it is essential for the Defendant to establish that the design applied for is the only
mode/option which was possible considering the functional requirements of the products.”
In India, the terms used in Section 2(d) are mode or principal of construction or mere
mechanical device. Functionality is not, per se ,excluded for registration; however, the terms
when deconstructed as has been done in various case laws, are interpreted to exclude
functional designs. However, it sometimes depend s on the facts and circumstances in
question and multiplicity of forms approach is applied, as wa applied in the Whirlpool case. It
can be deciphered that in India, both the approaches are followed since our judgments are
highly inspired by the conditions specific to each particular case.
3. These pictures
 4. Determination Of Nonobviousness: An Indian
Approach ." 1

Non-obviousness of the invention is one of the three desiderata for the grant of Patent,
others being novelty and industrial application. Simply put nonobvious as a patent term
means that the invention shall not be obvious or apparent to a person ordinary skilled in the
field relating to the invention. Basically the invention shall contain an inventive step over the
prior art. It should not be mere a workshop improvement or general re-arrangement of
components / features of the invention.

This test of non-obviousness is to be made with the perspective of a person having ordinary
skill in the art i.e. having average skills, and not an expert in that technology. The test is very
essential and subjective too, while deciding the inventive step the adjudicator needs to
assess the "inventive step" on the scale and parameters of a person ordinarily skilled in that
art.

The Delhi High Court in the matter titled Asian Electronics Ltd. Vs. Havells India
Limited2 looked into the basic criteria of patentability, particularly "non-obviousness" or
"Inventive-step" in a Patent. In this article the focus will be on the concept of non-
obviousness in the patent laws and the above mentioned case.

The US Supreme Court has discussed the aspects involved in the non-obviousness analysis
in the landmark case Graham et al. v. John Deere Co. of 2 Kansas City et al3. Three
factors were laid down as tests for which should be looked into while determining
obviousness, these are commonly known as Graham factors:

1. the scope and content of the prior art;

2. the differences between the prior art and the claims at issue; and
3. the level of ordinary skill in the pertinent art.

Apart from the above factors the US Apex Court also laid down secondary considerations
as:

1. commercial success of the invention,

2. long felt but unsolved need, and,
3. failures of others could serve as evidence of nonobviousness.

The Supreme Court of India in M/s. Bishwanath Prasad Radhey Shyam Appellant v. M/s.
Hindustan Metal Industries4, laid down the importance of assessing inventive step, as
below-

"It is important that in order to be patentable an improvement on something known before or

a combination of different matters already known, should be something more than a mere
workshop improvement; and must independently satisfy the test of invention or an 'inventive
step'. To be patentable the improvement or the combination must produce a new result, or a
new article or a better or cheaper article than before. The combination of old known integers
may be so combined that by their working interrelation they produce a new process or
improved result. Mere collection of more than one integers or things, not involving the
exercise of any inventive faculty, does not qualify for the grant of a patent."
Facts of the case Asian Electronics Ltd. Vs. Havells India Limited:
Asian Electronics (hereinafter plaintiff ) being owner of patent no. 193488 for "Conversion Kit
to change the fluorescent lighting units inductive operation to electronic operation" filed a suit
for permanent injunction and damages for infringement against Havells Limited (hereinafter
defendant). The plaintiff alleges that the defendant is using all the novel and important
features of their invention. The comparison between defendant's product and plaintiff's
patented invention was done as below:

S.No Claim 1 of patent no. 193488 Product of Defendant

.
1 Conversion Kit YES
2 Adaptors on either side of fluorescent Yes
lamp
3 Wiring assembly YES
4 Ballast Present, mounted in wiring
assembly
The plaintiff submitted that the novel features of the invention are the two adaptors based on
2 sides which assist in the process of conversion to electronic current from induction and
thus minimize flickering which is normally associated with fluorescent lights. The defendant
alleged that the plaintiff's invention is not entitled to a patent on as it is based on a prior art. It
was alleged that the patent is based on the US Patent 4246629 which discloses all the
essential or important elements of the plaintiff's patent. Defendant further submitted that the
plaintiff's patent is just workshop improvement or trade variant of the US Patent; it lacks the
inventive step essential for the grant of Patent under the Act. Sections of the Patent Act are
reproduced as cited by the defendant.

SECTION 3. WHAT ARE NOT INVENTIONS:-

(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 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.

(f) the mere arrangement or re-arrangement or duplication of known devices each

functioning independently of one another in a known way;

The Court upon analysis of plaintiff's patent stated that plaintiff is not claiming that any of the
components are inventions, or involve a new or inventive step; the patent is claimed for the
kit, which incorporates the two sleeve-like ends, one or both of which contain the ballast. In
other words the claim is only in respect of the design or this particular assembly.

The Court was of view that the plaintiff's patent does not disclose any new product or any
significant improvement. It was held that the plaintiff's patent is mere a workshop
improvement over the US Patent; the comparison of the US Patent with the plaintiff's is as
below:

Embodiment US Plaintiffs
Patent Patent
1. Fluorescent Tube Present Present
2. A pair of sleeve like adaptors on each side of Present Present
lamp
3. Wiring Assembly Present Present
4. Conversion kit Present Present
Based on above the Court was of prima facie view that the patent cannot sustain as being
obvious, and is also hit by the section 3(d) and 3(f ) of the Patents Act, 1970.

The High Court took reliance on the decision reported as British Celanese Ltd v.
Courtaultds Ltd5., it was held, of patents involving combinations, that:

It is accepted as sound law that a mere placing side by side of old integers so that each
performs its own proper function independently of any of the others is not a patentable
combination, but that where the old integers when placed together have some working
interrelation producing a new or improved result then there is patentable subject matter in
the idea of the working inter relation brought about by the collocation of the integers.

The High Court observed that the US patent clearly mentions about two ends and electronic
ballast as claimed by the plaintiff in its patent. Further the function of the end product is the
same, i.e. a fluorescent lamp. The plaintiff' also failed to explain any significant improvement
in function or efficiency, or any objective material in the new product, it has to be concluded
that the patent is hit, prima facie, by anticipation. In view of the above findings and
precedents the Court dismissed the application for grant of injunction stating that patent is
anticipated by prior art and the plaintiff has failed to establish balance of convenience in his
favour.

India has been witnessing an increase in patent enforcement activities. Going forward, one
can anticipate much more refined tests for determining the presence of inventive step in
inventions. It is recommended that patent practitioner keep themselves educated about this
fascinating topic of "inventive step/obviousness" and provide informed opinions.6 This test of
non-obviousness is to be made with the perspective of a person having ordinary skill in the
art i.e. having average skills, and not an expert in that technology. The test is very essential
and subjective too, while deciding the inventive step the adjudicator needs to assess the
"inventive step" on the scale and parameters of a person ordinarily skilled in that art
 MATHEMATICAL OPERATION, COMPUTER ALGORITHM CASES AND
PATENT
What is Algorithm or Software/Computer Programs for the purpose of Patent: The word
Algorithm or Software/Computer Programs has not been defined in the Patent Act 1970;
however, the Patent Manual defines as follows: “any invention the performance of which
involves the use of computer, computer network or other programmable apparatus, or an
invention one or more features which are realized wholly or partially by means of a computer
program. Computer programs are a set of instructions for controlling a sequence of operations
of a data processing system. It closely resembles a mathematical method. It may be expressed
in various forms e.g., a series of verbal statements, a flowchart, an algorithm, or other coded
form and maybe presented in a form suitable for direct entry into a particular computer or
may require transcription into a different format (computer language). It may merely be
written on paper or recorded on some machine-readable medium such as magnetic tape or
disc or optically scanned record, or it may be permanently recorded in a control store forming
part of a computer.”
The Patent on Software, Algorithms are per se not patentable in India or even in US. Section
3(k) of Patent Act, 1970 “The following inventions are not inventions within the meaning of
this Act - a mathematical or business method or a computer program per se or algorithm”.
Though the section has not been interpreted by the Courts in India so in absence of a clear
interpretation by the Courts we can say the Patent protection is accorded when the software is
incorporated into a Hardware that has some technical effects.
The Manual of Patent Practice of Indian Patent Office describes the policy for Patent of
Program/Software/Algorithms as follows: The relevant portions are underlined. “If the patent
application relates only to a machine i.e., hardware based invention, the best mode of
operation may be described along with the suitable illustrations. However, in the case of a
process related inventions, the necessary sequence of steps should clearly be described so as
to distinguish the invention from the prior art with the help of the flowcharts. The source or
pseudo/object codes may be incorporated in the description optionally.
[http://www.iitk.ac.in/olddord/how%20do%20I%20patent%20software.pdf]
1) Diamond v. Diehr, 450 U.S. 175 (1981)
The respondents filed a patent application claiming the invention of a process for molding
raw, uncured synthetic rubber into cured precision products. Whereas the process was already
possible using well-known time, temperature, and cure relationships to calculate when to
open the press, the respondents held that their invention allows to exactly measure the
temperature inside the mold which was so far an uncontrollable variable in the process. This
innovation would enable the industry to obtain -hitherto impossible- uniformly accurate cures
by constantly measuring the temperature inside the mold and feeding the data into a computer
which then uses an existing equation to calculate the optimal cure time.
Legal Issues
The Court had to decide on whether the respondent's claims fall within the categories of
potentially patentable subject matter.
First, it had to construe the word “process” as used in 35 U.S.C. §101, whose subject matter
is defined as “any new and useful process, machine, manufacture or composition of matter, or
any new or useful improvement (thereof)”. It affirmed the definition of a “process” which
holds that "a process is a mode of treatment of certain materials to produce a given result. If
new and useful, it is just as patentable as a piece of machinery”.
Secondly, the Court then addressed the question of the patentability of processes including
elements that are excluded from patentable subject matter. It confirmed that a process “is not
unpatentable because it contains a law of nature or a mathematical algorithm” and went on to
establish that in judging whether a claim or an invention at hand represent patentable subject
matter, they need to be considered as a whole rather than being dissected into their various
elements. The decisive factor in determining the patentability of a process is whether it, being
considered as a whole, is performing a function which the patent laws were designed to
protect: Furthermore, it holds that concerning the determination whether an invention falls in
general under patentable subject matter, it is irrelevant whether it meets the criteria of
“novelty” and “non-obviousness”.
The Court ruled that the respondents did not seek to patent a mathematical formula, but rather
a protection for a process of curing synthetic rubber including a formula. The claims thus
contain patentable subject matter.
2) Gottschalk v. Benson (refer sachan
notes)
In 1972, for the first time, the United States Supreme Court addressed the issue of whether a
computer program could be patentable subject matter under section 101. The United States
Supreme Court said that a patent on the computer program involved would in effect be a
patent on the algorithm used and is thus not allowable. The court held that a mathematical
algorithm converting binary coded decimal numerals into pure binary code itself is not
patentable as a process, because it is merely an abstract idea.
The CCPA (California Consumer Privacy Act) interpreted Benson case narrowly, stating that
the opinion disallowed a process claim on a formula or a process claim that included steps for
determining the values of variables with the formula as the final step. Nevertheless, where the
program was only part of a process claim, and there was sufficient post solution activity,
Benson was deemed not to apply and the claim was allowed. The CCPA reasoned that with
the claim thus restricted, the formula was not preempted by the claim. Also, claims drawn in
apparatus form were allowed, with Benson being considered restricted to process claims.

3) Parker v Flook
Flook's patent application contained process claims on a method of updating alarm limits
during the catalytic conversion of hydrocarbons." That method used a formula to determine
an alarm limit value, and then the alarm limit was adjusted to that value. -Although the
program was essentially a formula, the claim included a final step of adjusting the alarm
limit.
The Court held that a process can be patented only if it is new and inventive without the
formula. "The process itself, not merely the mathematical algorithm, must be new and useful.
Indeed, the novelty of the mathematical algorithm is not a determining factor at all." The
Court summarized its holding in a footnote: "Very simply, our holding today is that a claim
for an improved method of calculation, even when tied to a specific end use, is unpatentable
subject matter under § 101." The Court considered the computer program to be an algorithm
or a mathematical formula, which is like a law of nature. A law of nature cannot be patented;
only an inventive application of it can. The Court rejected the reasoning of the CCPA, saying
that "[the notion that post-solution activity, no matter how conventional or obvious in itself,
can transform an unpatentable principle into a patentable process exalts form over substance.
The Court goes on to say that in determining whether a process is statutory subject matter,
first the formula should be considered as though it were well known, then the process as a
whole should be examined for inventiveness. Because any inventiveness must lie in the
nonformula steps, and these steps in Flook's claim were well known, Flook's process is not
statutory subject matter.
https://repository.uchastings.edu/cgi/viewcontent.cgi?
article=2624&context=hastings_law_journal

4) Telegraph Case - O'Reilly v. Morse [56

U.S. (15 How.) 62 (1854)]
RULE: Whoever discovers that a certain useful result will be produced, in any art, machine,
manufacture, or composition of matter, by the use of certain means, is entitled to a patent for
it; provided he specifies the means he uses in a manner so full and exact, that any one skilled
in the science to which it appertains, can, by using the means he specifies, without any
addition to, or subtraction from them, produce precisely the result he describes. And if this
cannot be done by the means he describes, the patent is void. And if it can be done, then the
patent confers on him the exclusive right to use the means he specifies to produce the result
or effect he describes, and nothing more.
FACTS: This patent infringement action was brought by appellees, one of whom was the
alleged original inventor of the electro-magnetic telegraph, Samuel Morse. The circuit court
ruled in favor of appellees after finding that appellants had produced and were operating a
similar telegraph machine that infringed on appellee inventor's patent. The circuit court
issued an injunction against appellants' further use of the telegraph. On appeal, appellants
argued that appellee inventor was not the original and first inventor of the telegraph described
in his patents, and further claimed that his patents were void. There were several issues in the
case, e.g. whether Morse was indeed first to invent the telegraph, the issue of lasting
importance concerned Morse's eighth claim, which was directed to a method of
communicating intelligible information to any distance:” Eighth. I do not propose to limit
myself to the specific machinery or parts of machinery described in the foregoing
specification and claims; the essence of my invention being the use of the motive power of
the electric or galvanic current, which I call electro-magnetism, however developed for
marking or printing intelligible characters, signs, or letters, at any distances, being a new
application of that power of which I claim to be the first inventor or discoverer.”
ISSUE: Was Morse’s Claim No. 8 on the telegraph patentable?
ANSWER: No
CONCLUSION: Morse claimed the exclusive right to every improvement where the motive
power is the electric or galvanic current, and the result is the marking or printing intelligible
characters, signs, or letters at a distance. If this claim can be maintained, it matters not by
what process or machinery the result is accomplished. For aught that we now know, some
future inventor, in the onward march of science, may discover a mode of writing or printing
at a distance by means of the electric or galvanic current xxx. His invention may be less
complicated -- less liable to get out of order -- less expensive in construction, and in its
operation. But yet if it is covered by this patent, the inventor could not use it, nor the public
have the benefit of it, without the permission of Morse. New discoveries in physical science
may enable him to combine it with new agents and new elements, and by that means attain
the object in a manner superior to the present process and altogether different from it. And if
he can secure the exclusive use by his present patent, he may vary it with every new
discovery and development of the science, and need place no description of the new manner,
process, or machinery upon the records of the patent office. The United States Supreme Court
noted that Morse's claim was to an exclusive right to use a manner and process which Morse
had not described and indeed had not yet invented. The Supreme Court held that the claim is
too broad and not warranted by law.

5) Telephone case- Dolbear vs American

bell telephone company- graham bell
The controversial telephone war occurred in the late 1870s and 1880s based on a strange and
curious fact – Alexander Graham Bell, who is now considered the inventor of the telephone,
filed his telephone patent on the same day another inventor, Elisha Gray, filed his own patent
application for the telephone. Bell’s was the fifth filed that day, February 14, 19876, while
Gray’s was the 39th. In this case, Bell was granted U.S. Patent No. 174,465 for “The method
of, and apparatus for, transmitting vocal or other sounds telegraphically, as herein described,
by causing electrical undulations, similar in form to the vibrations of the air accompanying
the said vocal or other sounds, substantially as set forth.” Gray filed his patent caveat only a
few hours after Bell’s patent was filed (at the time a means to reserve a priority date, similar
to today’s provisional applications, abolished in 1909). The Dolbear case was brought by
Western Union as it fought Bell for monopoly-power in the telephone industry, but the
Supreme Court found that Bell’s patent was valid despite numerous inventors coming before
him, thus validating his claim to invention to the public.
The Supreme Court held that “It appears from the proof in these causes that Alexander
Graham Bell was the first discoverer of the art or process of transferring to, or impressing
upon, a continuous current of electricity in a closed circuit, by gradually changing its
intensity, the vibrations of air produced by the human voice in articulate speech, in a way to
cause the speech to be carried to and received by a listener at a distance on the line of the
current; and this discovery was patentable under the patent laws of the United States.”

6) In re Abrams case
The United States Court of Customs and Patent Appeals (CCPA), the predecessor to the
Federal Circuit, issued the clearest opinion articulating the point-of-novelty test. In re Abrams
involved claims “for Petroleum Prospecting Method.” In this case, the non-statutory elements
of the claim were objected to as “purely mental in character.” The illustrative claim four
recites “a method of prospecting for petroliferous deposits” with six steps; the court
determined the last three were “mental steps.” The first three steps were determined to be
statutory elements: “sinking a number of boreholes,” “sealing off each said boreholes from
the atmosphere,” and “reducing the pressure.” The three mental steps involved “measuring
the rate of pressure rise,” “determining the rate . . . at a standard reference,” and “comparing
the rates . . . to detect anomalies.”
Abrams asserted that analyzing mental-step claims such as this needed a logical rule to
follow. Abrams’s brief proposed a rule, which the court appeared to adopt implicitly, that
determines patentability by sorting claims into one of three categories. The first category is
where all method steps “are purely mental in character,” which would clearly not be
patentable. The second and third are the difficult ones. The second category is where “a
method claim embodies both positive and physical steps as well as so-called mental steps,”
but the novelty is in the mental steps; “then the claim is considered unpatentable for the same
reason that it would be if all the steps were purely mental in character.” The last category is
where the novelty “resides in one or more of the positive and physical steps,” and contains
patentable subject matter.
Though the court did not disagree with Abrams’s proposed rule in Abrams, it nevertheless
found that the claim fell within the second category of claims. The court found steps
“involving therein such purely mental terms as ‘determining’, ‘registering’, ‘counting’,
‘observing’, ‘measuring’, ‘comparing’, ‘recording’, and ‘computing’” to be non-statutory.
Since the first two steps were determined to be “old for the purposes of the present
application,” the novelty was in the final three steps, which involved measuring, determining,
and comparing respectively. Since the court determined that these terms were non-statutory,
the claim failed the test.

7) In re Prater. 1969
In Prater, the Court of Customs and Patent Appeals (“CCPA”) refined the broadest
reasonable interpretation standard such that the standard was to be applied consistent with the
specification. In particular, the claims at issue in Prater were admitted by Prater to be broad
enough to cover purely mental processes (and thus non-statutory subject matter under 35
U.S.C. §101), but Prater urged the court that, read in view of the Prater’s specification which
disclosed an analog device to perform the task, the claim must cover a statutory machine. The
CCPA agreed with Prater regarding reading claims in light of the specification, but viewed
the particular issue as a request to read a limitation into the claims, as opposed to interpret a
particular limitation in view of the claims.

8) TRAGEDY OF ANTI-COMMONS
The idea of the “anti-commons” was introduced to the law and economics literature by Heller
(1998)1 and Heller and Eisenberg (1998)2 using an analogy with Hardin’s “tragedy of the
commons.” Heller defined the anti-commons as a situation on which “multiple owners are
each endowed with the right to exclude others from a scarce resource, and no one has an
effective privilege of use.” The term was coined by Frank Michelman, who, challenging the
presumptive efficiency of private property, defined anticommons as “a type of property in
which everyone always has rights respecting the objects in the regime, and no one,
consequently, is ever privileged to use any of them except as particularly authorized by
others”. The tragedy of the anticommons is a type of coordination breakdown, in which a
single resource has numerous rightsholders who prevent others from using it, frustrating what
would be a socially desirable outcome.