PATENTABLE SUBJECT MATTER AND PATENTABILITY CRITERIA

This article is written by Mayank Kumar, University law College, Hazaribagh 5^th year, BALLB student during an internship at LeDroit India.

KEYWORDS:

Intellectual Property, Patents, TRIPS, WIPO, WTO

ABSTRACT:

 Patentable subject matter and patent eligibility are foundational constructs in the law of intellectual property. Many national patent systems, including those of the U.S. and Europe, require an invention to be contained within certain types of inventions, specifically, processes, machines, manufactures or compositions of matter, to be patent protected. The invention must also fulfill the criteria of novelty, non-obviousness and utility

A patent holder is legally empowered to prevent others from developing, utilizing, or commercializing the invention following the publication of an invention disclosure document. Patent rights are private in the majority of countries, and their enforcement requires legal action from the patent holder. The significance of patents in in certain companies but not in others.
There are significant differences among nations in the patent application process, the requirements placed on the patentee, and the scope of the exclusive rights. Usually, a patent application contains one or more claims to specify the extent of protection desired. A unique property right is defined by a single patent claim. In the United States, novelty, utility, and no obviousness are prerequisites for patentability.
Patents for any invention in any technological field should be accessible in WTO member nations under the TRIPS Agreement. that is fresh, creative, and useful in the workplace.
However, patentable subject matter differs amongst nations, including those that are WTO members. Additionally, a minimum twenty-year protection period is required by TRIPS. It is a material or a method that provides a fresh approach to a task or a technical fix for an issue. A patent application must include technical details on the invention. The following article will offer an analysis of the patentability criterion in accordance with the Indian Patents Act, 1970.

INTRODUCTION:

With time and technological advancements, the scope of intellectual property is growing and changing. Within its purview are patents, copyrights, trademarks, industrial designs, and more. Every time someone develops a novel concept, technique, or innovation, they attempt to obtain rights and protection under the general heading of intellectual property. The ideas of innovation, distinctiveness, and usefulness are all covered by patent law. In India, it is regulated under the Patents Act of 1970, which has been modified by the Patents (Amendment) Acts of 2002 and 2005.

Patentability requirements are among the most important aspects of patent law. Among other things, they form the basis for determining when to grant a patent, establishing the scope of protection, and assessing the patent’s validity. They significantly affect the efficacy of the patent system in promoting economic and industrial growth, scientific and technological advancement, and public benefit. They might be considered essential parts of the patent machinery due to their value. The patent machine will also fail if they do.
A full set of patentability criteria and their individual components is not established under the Indian Patents Act (“Act”). Although the definitions provide a general idea of the requirements, it takes longer than anticipated to delve into the details of individual demands.

An invention’s eligibility for patent protection is assessed using a set of criteria known as patentability requirements. Patents will only be awarded to inventions that meet all the requirements; those that don’t will be rejected.

DEFINITION OF PATENT:

 Industrial property includes patents, which are a subset of intellectual property. It is an exclusive right that is given to someone who creates a new and useful product or who improves an existing product and comes up with a new method or technology for producing the goods. An innovation must meet the following requirements in order to be granted a patent:

 Novelty

 Non-obviousness

 Utility

‘Patent’ is derived from ‘letter patent’, which refers to open letters. These documents, which were addressed by the Crown and bore the King of England’s great seal, granted one or more people specific rights and benefits. New inventions were created in the 19th century in a variety of disciplines, including industry, art, equipment, merchandise, and devices. They were also wary of their usage by others. The Indian Patents and Design Act, 1911, was passed by the British rulers at the time to prevent unauthorized exploitation of the inventions.

As time went on, a comprehensive legislation that addressed only patents and the rights of patentees became necessary.

In accordance with the Patents Act’s Section 2(1)(j), an innovation is defined as an object or procedure that is unique, incorporates an innovative step, and has industrial significance.
Only items and procedures that satisfy the requirements of patent law are considered patentable innovations.
However, only three of the requirements for patentability are covered by the definition of innovation, and innovations need to meet two more requirements in order to be eligible for a patent. One concerns the list of topics that are not patentable, even if they are inventions, and the other focuses on the description and viability of the invention.

DURATION OF A PATENT:

A patent is valid for 20 years from the date of application submission and is subject to an annual renewal cost under the current Indian Patent Law, which is the Patents Act, 1970. The exclusive right of the patentee ends when the aforementioned term expires and it enters the public domain. The scope of patentable products in all technological domains, including chemicals, microbes, medications, and food, was expanded by Act modifications such the Patent Amendment Act, 2005.

PATENTABLE SUBJECT MATTER:

The term “patentable subject matter” was lifted from the US Patent Code and is not used in the Patents Act. The TRIPS Agreement uses the phrase “Patentable Subject Matter” in a more expansive sense than this chapter does. In the context of this chapter,

Both topics that are deemed patentable and those that are not are referred to as patentable subject matter.
According to the Act’s definition of innovation, an invention must be either a process or a product in order to qualify for patent protection. To put it another way, an innovation cannot be regarded patentable unless it is a product or a process. Therefore, products and processes that are unrestricted by industry, technology, or any other element are patentable subjects. In general Patentability issues at this level are rare, since every invention is either a product or a method. However, a sizable amount of the patentable subject matter criterion is met by the Patents Act, which contains an extensive list of advances that are not patentable.
A list of innovations that are not patentable is included in Sections 3 and 4 of the Patents Act. Atomic energy inventions are not covered by Section 4’s patentability exclusion, although Section 3 covers a broad list of topics that are not considered innovations. An invention will not meet the requirements for patentable subject matter if its subject matter falls under the list given in the aforementioned sections.

It can occasionally be challenging to navigate the relationship between Section 2(1)(j), which defines “invention,” and Section 3, which lists things that are not inventions. The scope and coverage analysis and the study of invention evaluation criteria under Section 2(1) overlap for some fields that are not considered inventions under Section 3(1). (j). Having said that, the Supreme Court declared in the Novartis case that decisions made under Section 2(1)(j) and Section 3 must be made independently of one another. The Supreme Court’s assessment demarcation states that one court’s ruling should not affect another, however in the case of many banned matters, this is more theoretical than practical.
Sixteen (16) sentences, each listing many items, make up Section 3. They don’t qualify as inventions. One computation indicates that there are approximately forty-six (46) topics in the sixteen (16) clauses. The range of patentable subject matter in India seems to be constrained by the long list of non-patentable discoveries.

PURPOSE OF OBTAINING A PATENT:

The patent aims to promote on the several things likewise some are the following ways that patents aid in technological advancement and allow the patent holder exclusive rights to his intellectual property:

It promotes research and innovative inventions, it convinces a creator to reveal his creation instead of keeping it a trade secret.
, It provides incentives to inventors so they can cover the costs of their creations until they are viable from a business standpoint & it incentivizes the innovator to spend money on new technologies in order to satisfy production demands.

OBTAIN OF A PATENT:

Process of a patent
The first step in obtaining a patent is submitting a patent application with a complete or preliminary specification. Since India uses a “file-to-file” system, priority dates are crucial. Eighteen months after it is filed, the patent application is published. At the applicant’s request, the patent application is reviewed, and the controller takes the examiner’s findings into consideration for additional processing. According to section 25(1) of the Act, anybody may contest the patent grant after it has been published but before it is granted. If there are no objections, the patent is granted to the patentee.

PATENTABILITY CRITERIA:

For an innovation to be eligible for patenting in India, it must pass a number of conditions. The three essential tests are mandatory in order to obtain a patent for an innovation, a number of conditions must be met.

Principles or requirements of patent law

The following criteria, which also function as the cornerstones of Indian patent law, must be met by a product in order to be granted a patent. They are:
An invention needs to be novel.

There has to be some creative step involved.
able can be applied in factories, or in an industrial setting.
It must not be a subject that is not patentable or fall under one of the exceptions.

Novelty or newness

The invention must be unique and unrelated to any previous products or inventions. A “new invention” is defined as one that has not been foreseen by previous publications and does not belong to the public domain in Section 2(1) of the Patents (Amendment) Act, 2005. There must be no prior publication of the innovation. But a simple discovery is not the same as an invention.

Non obviousness or inventive step

Section 2(1)(1) of the Indian Patents Act, 1970 states that an innovation is any technique or product that incorporates an innovative step and can be applied in the industry. It is evident from this definition that the innovation must be innovative and unknown to any expert in the associated field.

ILLUSTRAION WITH CASE LAWS:

As dealt by supreme Court judges, it’s been observed Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries that an invention’s creative step and originality are a mixed legal and factual issue that heavily depends on the specific facts of each case. There is no one-size-fits-all test that can be developed; nevertheless, certain general standards can be suggested. Was the patented manufacturing method widely recognized, employed, and practiced in a nation prior to or on the date of the patent? It will be seen as a negative innovation if the response is still in the positive.

In the Case of Gopal Glass Works Ltd. v. Assistant Controller of Patents (2005), an invention needs to be novel and unique in order to qualify for patent protection. On its own, uniqueness is not a comprehensive criterion. The product or invention should also be sufficiently unique.

In the Case of Novartis v. Union of India, the Supreme Court stated that the drug was the product of some changes made to an already-available medication that people even take. According to Section 3(d) of the Patents Act of 1970, it failed to demonstrate therapeutic efficacy or meet the requirements for innovation. Therefore, a simple invention or alteration to an already-existing product cannot be patented.

CONCLUSION:

The number of patents filed has increased over the years, and for good reason – patents are crucial for protecting inventors’ rights and promoting innovative ideas for the benefit of the general public. It has been demonstrated that patents offer both individuals and businesses significant value and a higher return on investment. For the technology to be implemented, a clever plan that balances commercial interests is required. Regarding its function in public policy, it is stated to be confronted with two difficulties: internal operations and external issues. These difficulties will have a significant effect on the patent application process as a whole, so more practical and sustainable. Intellectual property encompasses any work of art, innovation, or creativity that is the product of an individual’s mind. The rights granted to such an individual for his production, work, idea, or invention are referred to as intellectual property rights. One type of intellectual property is patents. As long as it doesn’t fall under the category of non-patentable innovations, any invention that leads to the creation of a new good or service or the manufacturing of an existing good using novel techniques and technology may be eligible for patent protection. The Indian Patents Act, 1970, which was revised twice in 2002 and 2005, respectively, governs patents in India. The process of obtaining a patent for an innovation requires meeting specific requirements. Novelty or newness, utility or usefulness (ability to be applied in an industrial setting), and non-obviousness are the three fundamental characteristics.

REFERENCES:

1. Section 2(j), The Patents Act, 1970, last amended in 2005.
2. Sections 3 and 4, The Patents Act, 1970, last amended in 2005.  Section 3(d), The Patents Act, 1970, last amended in 2005.
3. Shamnad Basheer’s articles on Spicy IP, available at: https://spicyip.com/author/shamnad-basheer, visited on 16th September, 2019
4. NOVARTIS AG (APPELLANT) Vs. UNION OF INDIA & OTHERS (RESPONDENTS), Decided by the Supreme Court of India, CIVIL APPEAL Nos. 2706-2716 OF 2013
5. Section 3(j), The Patents Act, 1970, last amended in 2005.
6. Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries AIR 1982 SC 1444 Indian Kanoon
7. Gopal Glass Works Ltd. v. Assistant Controller of Patents 2006 (33) PTC 434 (Cal) Indian Kanoon
8. Cypris (28^th April 2023) https://www.cypris.ai/insights/how-do-patents-act-as-an-incentive-to-technological-innovation  
9. Yash Bhardwaj innovations vs Interests https://onlinelegalquery.com/blog-details/innovation-vs-interests-an-analysis-of-patentability-of-the-inventions
10. Chaim Levitz, JMB Davis Ben-David Patent Attorneys, Jerusalem, Israel, 2020  https://jmbdavis.com/knowledgebase/explanation-novelty-and-inventive-step-as-per-israel-patent-law/
11. Monesh Mehndiratta Patentability criteria (Aug 17^th 2022) https://blog.ipleaders.in/patentability-criteria/
12. https://libguides.library.umaine.edu/ptrc/uspatents
13. https://www.intepat.com/blog/what-can-be-patented-india/
14. https://www.casemine.com/search/in/gopal%2Bglass%2Bworks