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CONCEPTS RELATED

TO PATENTABILITY

By
Somashekar Ramakrishna
Brain League IP Services

© Brain League IP Services Pvt. Ltd


Industrial applicability/Utility
Industrial Applicability/Utility

 Industrial Application The invention is capable of being made or used in an industry Sec 2(1)
(ac)

 No Industrial applicability
 If vague and speculative possible objectives are indicated (MPPP Sec 3.25.3)

 For processes or articles alleged to operate in a manner contrary to well-established
physical laws (MPPP 3.25.5)

 For method of treatment of the human or animal body by surgery or therapy or of
diagnosis practiced on the human or animal body (MPPP 3.25.6)

 For parts/pieces of the human or animal body to be used in transplants (MPPP 3.25.6)

 e.g. Scheme for exchanging all or part of a prison sentence for corporal punishment
Lacks Industrial Applicability Melia’s Applicaton (BL O/153/92)

Anticipation
Anticipation
 (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 public domain or
that it does not form part of the state
of the art;

Anticipation
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Invention Prior Art


Anticipation
 Prior Art
Prior Publication
Public Knowledge and Public Use
Public display
On sale

Anticipation
 Prior Publication

Date of
filing of
Indian Patent application
Publication
CS Indian Patent application
Publication
Section 13(1) a Section 13(1)b

Publication in India or
elsewhere in any document
Section 13(2)

No limit on the age of the


disclosure
Anticipation
 Prior Publication
if ‘X’ files a patent application on 25th
September, 2009 relating to an invention and
if Y’s application relating to the same
invention, which was filed on 25th
September, 2007, is published on 25th
October, 2009, the invention of X will not be
novel.
Anticipation
 Exceptions/No Anticipation by Prior Publication
if
 1) the patentee proves:
 a) Wrongful Obtainment; and
 b) Application for patent was filed as soon as
reasonably practical after learning about the publication (Sec 29
(2) (a) and (b))

 e.g. if ‘X’ takes information relating to an invention from Y’s lab


and publishes it without Y’s knowledge, such publication will
not anticipate the invention provided Y files a patent application
after learning about the publication within a reasonable period of
time.
Anticipation

2) a complete specification was filed by a person


and thereafter the invention is published or used
by contravening the rights of the true and first
inventor or any person deriving rights from him.
(Sec 29(3))

○ e.g. if ‘X’ is the true and first inventor of an
invention and if ‘Y’ his colleague files for a
patent over the invention without informing X
and permits ‘A’ to use it, Y’s application when
published or use of the invention by A will not
anticipate the patent application filed by X
Anticipation

3) the invention is communicated to the
Government or to any person authorized by
the Government to Investigate the invention
or its merits (Sec 30)
Anticipation
4) If the invention in a paper is read by the true
and first inventor before a learned society or
published with the inventor’s consent in the
transactions of such a society IF
 if an application for a patent relating to the
invention is filed within twelve months (12) of
the date of publication (Sec 31 (d))
Anticipation
 Public Knowledge and Public Use
Knowledge already in the public domain or
knowledge easily accessible to the public.

 Exception
 If the use of the invention was by way of imposing
secrecy then it is not a public use .
Anticipation
 Public Display
Public Display of an invention before the filing
date of the patent application will anticipate the
invention.

Exception
 However, if an invention is displayed by the inventor
at an exhibition notified by the Central
Government in the official gazette, such a public
display or use of the invention at the exhibition or
publication of details of the invention as a
consequence of the exhibition will not anticipate
the invention
 provided a patent application is filed within
twelve (12) months from the date of such public
display
Anticipation
On Sale
○ I f an invention is on sale or is commercially
worked in India by the applicant…. before
the date of the patent application, it will not
be considered to be novel.

 (Exception) However, if the invention was on


reasonable trial, it will not be anticipated. Section
29(2)(b), Section 31(1)(a) and (b),

Anticipation
On Sale
 e.g. if the inventor sellshis novel road roller to the
government, he cannot get a patent over it as the sale
negates novelty of the invention.

 However, if the inventor tests the functioning of a Road


Roller in public under a government contract, such a
test will not anticipate the invention.


Anticipation
 Subject Matter in the Prior Art

Thumb Rule: A Prior publication will


anticipate…….ONLY if it contains
…..ALL the features of the invention Farbewerke
Hoechst Aktiengesellschaft vormals meister Lucius &Bruning a Corporation etc. Vs. Unichem Laboratories and Ors

MANU/MH/0064/1969


The anticipatory disclosure must be
entirely contained within a single
document. (MPPP 3.3.4)

Anticipation
Example
A chair

4 legs
Each leg is provided with a wheel

 Prior Art 1
 chair with 4 legs
Prior Art 2

 wheels in toy chair.


Anticipation

Prior Art

Invention
Inventive step/non-obviousness
Inventive Step
 Inventive step –
○ 1) Technically advanced in the light of the
prior art or should have economic
significance ; and

○ 2) The invention should be non-obvious to
a person skilled in the art

 “inventive step” means a feature of an invention that
involves technical advance as compared to the
existing knowledge or having economic significance
or both and that makes the invention not obvious to a
person skilled in the art; Sec 2(ja)
Inventive Step
 Person skilled in the art
Presumed to be an ordinary practitioner
aware of what was common general
knowledge in the art at the relevant date
(MPPP 3.51.2)

A notional skilled person who would
perform a transfer of technology from a
neighboring field to his specific filed of
interest, if this transfer involved routine
experimental work comprising only
routine trails (MPPP 3.51.3)
Inventive Step
 Some Issues Involved in determining
Inventive step
 What was the problem which the patented
development addressed?
How long had that problem existed?
How significant was the problem seen to be?
How widely known was the problem and how
many were likely to seeking a
solution?.........

Inventive Step
 Indicators of inventive step
Distance- b/n the Subject matter and the
prior art
Unexpected effect
Long felt need
Failure of others
Commercial success
Inventive Step
 Lack of Inventive step
Invention provides equivalent

Prior art is incomplete and the invention
lies in filling the gap which would readily
occur to a person skilled in the art

New use of a known material


Inventive Step
 In determining Inventive Step
Mosaicing multiple documents is permitted
All information in any set of documents
can be combined provided they are all in
the same art (analogous)
No hindsight should be employed (taking
the solution and working backwards)


Inventive Step
 Biswanath Prasad Radhey Shyam Vs. Hindustan Metal
industries, AIR 1982 SC 1444
 Patent:
 Means for holding utensils for turning purposes

 Prior Art:
 Lathe (tailstock)

 To be patentable the improvement or the combination must
produce a new result, or a new article or a better or
cheaper article than what was already existing

 Improvement or combination should be something
more than the mere workshop improvement
Inventive Step
 Haberman and another v. Jackel International Ltd
(1999) FSR 683

 Patent:
ANWY CUP, a trainer cup for toddlers
Had a valve fitted to the lid
Would open when baby sucked and closed when it
stopped
 Immediate commercial success.
 Defendant: launched rival product: ‘super-seal”
 Suit for infringement: claim of obviousness.

 Justice Laddie:
‘ though involved a very small and simple
step, it is sufficiently inventive. It had
solved a problem (that is the long-felt
need for a spill-proof cup)’
Inventive Step
 Garewall ropes Ltd. Vs. Mr. Anant Kanoi
MANU/GJ/8265/2006
Patent:
Prefabricated collapsible gabion product made
from synthetic ropes
Gabions are well known (since 7000 years)
Rope gabions and polymer gabions were
being used in Maharashtra since 1991 and
in Bihar since 1987
 Held: Substituting elements of common
knowledge in a product would not give rise to
inventive step
Inventive Step
 Example:
Device for manually collecting the
agricultural produce has
 container (Plastic) open at the top
and closed at the bottom
 wall of the container has a contour
adapted to proximate the back of a human
body
 Straps and buckles for securing the
container to the individual
 Traditional product made out of
bamboo.


 THANK YOU!

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