ISWAR SARAN PG COLLEGE

(UNIVERSITY OF ALLAHABAD)
BA.LLB(Hons)

10th semester

{2023-2024}

• SUBMITTED BY - Ankur Yadav

• ROLL NO. - 12
• SUBJECT – Patent law
• TOPIC- Patentability Criteria under Patents Act 1970
• SUBMITTED TO – Ms. Jagriti Singh

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 Acknowledgement

I would like to express my sincere thanks to Ms. Jagriti ma’am for his valuable guidance and support
in completing my project. I would also like to express my gratitude towards our principal Mr. Anand
Shankar Singh for giving me this great opportunity to do a project on Patentability Criteria under
Patents Act 1970
Without their support and suggestions, this project would not have been completed.

Ankur Yadav
BA.LLB{HONS.}
10th SEMESTER ,2023-2024

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 TABLE OF CONTENT

S.no. Title Pg.no.

1 Introduction, Patentability criteria 4 to 6

2 Grounds of opposition of patent 7 to 9

3 Legal requirement of patentability as per WIPO and Global 9 & 10

perspective obtaining patent

4 Landmark judgements , Conclusion , References 10 to 12

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 INTRODUCTION
Patents serve as a cornerstone of innovation, providing inventors with the legal framework to
protect their creations and incentivizing further research and development. 1 The Patents Act of
1970, a seminal piece of legislation in India, stands as a testament to the country's commitment to
fostering innovation and protecting intellectual property rights. Enacted to replace the archaic and
restrictive patents law of 1911, the Patents Act 1970 ushered in a new era of intellectual property
rights in India, aligning the nation's patent regime with international standards while also
addressing the unique socio-economic needs of the country.

The importance of patents cannot be overstated, as they not only encourage inventors to disclose
their inventions to the public but also enable them to reap the rewards of their ingenuity through
exclusive rights granted for a limited period. This exclusivity, in turn, fosters competition and
drives technological progress by incentivizing further innovation and investment in research and
development.

Under the framework of the Patents Act 1970, certain criteria must be met for an invention to be
deemed patentable. These criteria serve as the bedrock of patent law, ensuring that patents are
granted only to inventions that meet the threshold of novelty, inventive step, and industrial
applicability. Additionally, the Act delineates subject matters that are excluded from patentability,
such as methods of agriculture, mathematical methods, and computer programs, to strike a delicate
balance between fostering innovation and safeguarding public interest.

In this assignment, we will delve into the intricacies of patentability criteria under the Patents Act
1970, exploring concepts such as novelty, inventive step, industrial applicability, sufficiency of
disclosure, and exclusions. Through a comprehensive examination of these criteria, we aim to
elucidate the fundamental principles that govern patent law in India and underscore the pivotal role
of patents in driving innovation, economic growth, and societal progress.

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M. Boldrin & D.K. Levine (2013)

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Patentability criteria
Every invention has to pass various tests and fall under the category of inventions that can be
patented in India. The 3 main tests are novelty, non-obviousness and utility. There are certain
requirements that need to be fulfilled in order to get a patent for an invention.
Requirements or principles ofPatent Law
To get a product patented, it has to fulfil the following requirements, which also serve as the
principles of patent law in India. These are:
 An invention must be new.
 It must involve an inventive step.
 Capable of being used in industries i.e. industrial application.
 It must not fall into the category of exceptions or subjects that are not patentable.

The following criteria determine what can be patented in India:

Novelty or newness
The invention must be new and not similar to any other inventions or existing products. According
to Section 2(l) of the Patents (Amendment) Act, 2005 ‘new invention’ means an invention that has
not been anticipated by prior publication and does not fall into the public domain. There must be
no prior publication of the invention. However, a mere discovery does not amount to an invention.
The two criteria for granting patents, i.e., novelty and utility, were recognized as important in the
case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979) 2. It was observed
in the case of Gopal Glass Works Ltd. v. Assistant Controller of Patents (2005) 3 , that for an
invention to be patented it must be new and original. Novelty in itself is not a complete criterion.
The product or invention must be sufficiently original as well.
Non-obviousness or inventive step
According to Section 2(1)(j) of the Indian Patents Act, 1970, any product or process that involves
an inventive step and is capable of being used in the industry is called an invention. This definition
makes it clear that the invention must have an inventive step and it must not be known to any
skilled person in that particular field. Section 2(1) (ja) of the Act defines ‘inventive step’. The

2
AIR 1982 SC 1444
3
2008 (10) SCC 657

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concept of inventive step was introduced in India in the case of Bishwanath Prasad Radhey Shyam
v. Hindustan Metal Industries (1979). It also reiterated the four tests of obviousness. These are:
 A skilled person must identify the inventive step in the form of prior use, art or knowledge.
 He must be able to tell the difference between the subject matter and the invention.
 Consideration must be given to observing the differences.
 There must be a degree of invention.
Usefulness or utility
This is another important criterion for granting patents. An invention must be useful and have an
industrial application besides being new and non-obvious. In the case of Cipla Ltd. v. F Hoffmann-
La Roche Ltd. (2015)4, the Court observed that according to the definitions of ‘invention’ and
‘capable of industrial application’ under the Act, an invention must have a commercial use so that
it can be utilized in the industries. In the case of Indian Vacuum Brake Co. Ltd. v. E.S. Luard
(1925)5, the Court observed that the term ‘utility’ has not been used in an abstract sense in the Act.
In order to qualify for a patent, an invention must have some utility. Mere usefulness is not enough.
Non-patentable inventions
Sections 3 and 4 of the Indian Patents Act of 1970 provide the list of inventions that are not
patentable. These are:
 Frivolous or fabricated inventions.
 An invention that violates public morality or causes a serious threat and prejudice to human,
animal or plant life.
 Mere discovery of a scientific principle or a theory that is abstract.
 Mere discovery of a new substance.
 An invention which is done by the mere arrangement, re-arrangement or duplication of
existing knowledge or devices.
 A method of agriculture or horticulture.
 Any process of treatment of humans, animals, and plants that may be medicinal, therapeutic,
surgical, diagnostic, curative, etc.
 A method of mathematics, business or algorithms.
 Any literary, dramatic or artistic work.

4
148 (2008) DLT 598
5
(AIR 1926 Cal 152)

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  Any presentation of information or process.
 Topography.
 An invention that is a result of the duplication of traditional knowledge.

Grounds of opposition to patents

Section 25 of the 1970 Act, provides the grounds on which an application for a patent may be
opposed by a person interested in patents. The grounds are:

Patent obtained wrongfully

In order to oppose the application of patents, the invention must have been obtained wrongfully
from the opponent. When the invention has been obtained from the opponent, the novelty has to
be considered in the light of prior specifications and patents. If there is any prior public prior, there
can be no remedy for the opponent.

Prior publication
This is another ground of opposition to the application of patents. Publication must be such that
the people to whom the information has been given are free to use it in whichever manner they
please. To satisfy this ground of opposition, a publication must be made before the priority date
claimed in the application. Such a prior document of prior publication must contain information
about the invention of the patentee.

Prior public use

If the invention for which an application for a patent was made had been publicly used before the
priority date of the claim, then it is a sufficient ground for opposition. It must be a public use rather
than a secret use. When the prior use was unintentional but fortuitous, then this ground for the
opposition could not be established.

Obviousness
The inventive step, or non-obviousness is one of the requirements of patentable inventions.
However, if any invention is obvious and does not include any inventive step, then the application

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of the patent can be opposed. The controller of the patents will only refuse the application on this
ground when it is unambiguous. In case of doubt or ambiguity. He may allow the grant and refer it
to be handled by the High Court.

Non-patentable invention
If any invention for which an application is made falls under the list of non-patentable inventions,
then the application will not be allowed by the controller.

Insufficient description
It is necessary to describe the particulars of the invention clearly and sufficiently. If the applicant
does not describe the invention properly in the specification, his application will be refused. When
the claims or description of the invention is inconsistent and insufficient, the application will not
be allowed by the controller if he is satisfied that there is an insufficient description of the
invention.

Failure to disclose foreign application

If the applicant has made any application for the same invention in any other foreign country, he is
bound to disclose the particulars to the controller. If he fails to do so, his application will be
opposed.

Convention application is not made within a reasonable time

A convention application has to be filed within 12 months from the date of the first application in
order to protect the invention made in a convention country. This helps the applicant to get the
same priority as he gets in the convention country. Failure to provide the application within a
reasonable time will result in the application being refused. A convention country, as declared by
the Central Government, gives privileges to Indian citizens with respect to patent applications
provided that the same privileges are given to citizens of such a country in India.

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Legal requirements for patentability as per WIPO
Every country has its own list of conditions that are necessary to obtain a patent. There can be no
universal list of requirements in this regard, but WIPO provides some important conditions that
must be fulfilled in order to obtain a patent. These are:
 The invention for which a patent is sought must adhere to the condition of novelty. It must
not resemble any prior art and must be new to an existing knowledge in any technical field.
 It must be non-obvious and include some inventive steps. It must be such that an ordinary
man with ordinary skills cannot deduce it.
 It must have some application in the industry i.e., industrial application.
 The subject matter of the invention must fall into the category of things that can be patented.
 When the application to obtain a patent is made, all the information and details of the
invention must be disclosed clearly.
Global perspective of obtaining a patent
A patent protects an invention, the creation of a product, or the process for manufacturing an
existing product with new technologies. The process of obtaining a patent is different in different
countries.
United Kingdom
A patent certificate can be obtained in the UK in 3-5 years and the term of such a patent is 20 years.
The fee for the patent application must be paid within 4 months of the application to the European
Patent Office (EPO). The following are the steps to obtaining a patent in the UK:
 An application for obtaining a patent must be filed within 12 months from the priority date
with the EPO. It can be filed in languages like English, French and German.
 All the necessary documents and the certified copy must be given within 16 months of the
priority date.
 The officers in EPO will review the applications and conduct a patent search on the request
made at the time of filing an application.
 An investigation of the patent application is conducted after a request is made within 6
months of its publication in the discovery report. A patent certificate is issued after all the
processes and reviews are complete.

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United States of America
A patent in the USA is issued for 20 years. A patent certificate is issued within 32 months of filing
an application to obtain a patent. The procedure to obtain a patent is as follows:
 An application to obtain a patent must be filed in the official language i.e. English.
 All the required documents and a certified copy must be submitted within 4 months of the
application.
 An applicant must disclose the information related to the invention through an information
disclosure statement.
 If the statement is made within 3 months from the date of application, no fee is to be paid
but if it is made after 3 months or if the information is already known to the foreign patent
office, an additional official fee must be paid.
 After the fee is paid, the officer reviews and examines the applications and grants the patent.

Landmark judgments on patentability criteria

Bajaj Auto Ltd. v. TVS Motors Comp. Ltd (2010)6
Facts
This case is related to a controversy of unauthorised use of patented technology by Bajaj auto by
TVS Motors, and they tried to seek an injunction against the defendants. The court in this case tried
to apply the doctrine of pith and marrow to see whether there was an actual infringement of
patented technology or not.

Issue
Whether the defendants have infringed the technology that was already patented?

Judgment
The Supreme Court, while deciding the case, gave some guidelines to be followed in every IPR
case. The following were the guidelines:

6
2009 (12) SC 103

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All the cases related to IPR must be dealt with by trial courts on a daily basis for their speedy
disposal. They must be decided within not more than 4 months from the date they have been filed.
The Madras High Court then finally gave judgment that Bajaj Auto does have a patent over DTS-
i technology and the defendants, TVS Motors, cannot use it. If they do, they have to face the
consequences for infringing a patent.

Novartis v. Union of India (2013)7

Facts
In this case, a company called Novartis applied to obtain a patent for a drug named ‘Gleevec’ but
the application was rejected by the Patents Controller and the Indian Patents Office. All the
rejections were challenged and opposed by the company in the Supreme Court.

Issue
Whether the application to obtain the patent for ‘Gleevec’ could be rejected or not, and whether the
reasons for rejection were justified.
Judgment
The Supreme Court in this case held that the drug was a result of some modifications to an already
existing drug in the market, which is even used by people. It did not fulfil the requirement of
novelty nor proved therapeutic efficacy according to Section 3(d) of the Patents Act, 1970. Thus,
a mere discovery or modification to an existing product cannot be patented.

Conclusion
Any creation, invention, idea or artistic work which is a result of the intellect of any person falls
within the ambit of intellectual property and the rights conferred upon such person for his creation,
work, idea or invention are known as intellectual property rights. Patents are a kind of intellectual
property. Any invention that results in the production of a new product or service or the
manufacturing of an already existing product through new means and technology can be patentable
provided that it does not fall into the list of non-patentable inventions. Patents in India are governed
by the Indian Patents Act, 1970, which has been amended twice in 2002 and 2005, respectively.

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13 S.C.R 148

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There are certain essentials of patents that have to be fulfilled in order to get a patent for an
invention. The 3 essential requirements are novelty or newness, utility or usefulness (capability of
industrial application) and non-obviousness. However, there are certain grounds on which the
application for the patents can be refused. These grounds have been described above in the article.

References
 https://ipindia.gov.in/writereaddata/Portal/ev/sections/ps50.html
 https://www.hkindia.com/news_letter/article/1/Patent%20artile-1.html
 https://www.business.qld.gov.au/running-business/protecting-business/ip/ip-
kit/browse-ip-topics/new-products,-processes-and-inventions-patents/five-
requirements
 https://www.mondaq.com/india/patent/526406/what-can-be-patented-in-
india
 https://www.wipo.int/patents/en/
 https://www.investopedia.com/terms/p/patent.asp
 https://www.government.nl/topics/intellectual-property/question-and-
answer/what-are-the-criteria-for-patenting-my-invention

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