(This article is written by Divya S. Sohoni, University of Mumbai, LL.M (1st Year) during her internship at LeDroit India)
Scope of Article:
- Concept and objectives of Patent law
- Statutory Framework Governing Patentability in India
- Meaning and Analysis of Novelty
- Meaning and Analysis of Inventive steps (non-obviousness)
- A Meaning and Analysis of Industrial Application (Utility)
- Judicial Interpretation through landmark case Laws
- Comparative Insight and Practical Illustrations
- Challenges in applying Patentability criteria
- Conclusion and way forward
Abstract
By granting exclusive rights to inventors for a specified period, patent law has an important role in facilitating and supporting innovations that advance technology. However, not all new inventions will meet the criteria to be patented. According to the Indian Patents Act of 1970, there are three specific patentability requirements:
- novelty
- inventive step (also called non-obviousness)
- industrial applicability.
These three requirements act as legal filters to identify whether something is entitled to receive patent protection. This article will address each of the three main patentability requirements separately and will analyse, on both an operational basis and through application of case law, how Indian courts and patent authorities evaluate whether each of these three requirements has been satisfied. The article will also address many of the challenges facing inventors and practitioners as they attempt to satisfy the patentability requirements, especially considering the rapid pace of change in technological advancement which affects the availability of patents and the manner in which patents are evaluated. This article is intended to provide readers with a uniform understanding of the patentability criteria.
Keywords: Patentability, Novelty, Inventive Step, Industrial Application, Patents Act 1970, Intellectual Property Rights
Introduction
What do you understand about the concept of Intellectual Property Rights (IPR)?
The creation of legal rights (by way of statute or common law) is also defined as Intellectual Property Rights. These legal definitions Intellectual property rights allow and encourage creativity and inventiveness within our society by providing the inventor/creator with exclusive rights over their invention/creation. One type of IPR is a patent.
The patent grants a monopoly to the owner of that patent for an invention, which means that the owner has exclusive rights to prevent other people from making, using, selling, and importing the patented invention for a defined period of time (usually 20 years). Decisions on whether to grant patent protection will be made on the basis of balancing the interests of the inventor in obtaining a monopoly from a patent against the interests of the public in being allowed to benefit from the invention as a result of public disclosure from the patenting process, as is the case in India.
To protect the patent system from granting monopolies on inventions that are of trivial nature or constitute what was already known before the applicant submitted a patent application, strict criteria have been set forth in the Patents Act to be met by any applicant seeking a patent. For instance, an invention as defined in section 2(1)(j) of the patents act is an invention is a new product or process involving an inventive step and is capable of being used in an industry. Therefore, novelty, inventive step and industrial applicability or manufacture may be viewed as the foundation of patent law in India.
Statutory Framework of Patentability in India
India’s patent law comes from two laws:
The Patents Act (1970) and The Patents Rules (2003), which have been modified over time to comply with popular international treaties, such as the TRIPS Agreement. The purpose of the Patents Act is to create patents, but not merely create monopolies on patents; rather, the purpose of the Act is to foster real innovation while preventing the misuse of patent rights.
The definitions in Section 2 of the Act are the most critical to determining patentability. The definition of “invention” in Section 2(1)(j) is the core of the entire patent law system, and provides a requirement that an invention be a new product or process, and that it must involve an inventive step and have industrial applicability. These three requirements collectively are the basic requirements for patentability in India, and must be met to obtain a patent in India.
In addition to this overview of patentability, Sections 3 and 4 of the Act provide a negative list of things that cannot be patented. As a result, the three elements of patentability may be satisfied by an invention, but a patent may be denied under Section 3 because(a) it is an abstract theory, (b) it is merely a discovery, © it is a method for agriculture, or(d) it is a new form of an existing substance with no increased efficacy. Thus, as indicated above, the statutory framework of the patent system in India serves as a cautionary and public-interest driven statute.
Novelty
Definitions of Newness
Newness is the primary requirement for obtaining a patent. Through providing that patents may only be granted for new inventions that are novel when seen in relation to all previous knowledge, newness has become a key aspect of all patent laws. As defined under Sec.2(1)(l) of the Patents Act, an “invention” is considered to be “new” if:
(i) it has not already been disclosed by prior written document or communicated orally anywhere on or before the date that the patent application has been filed or priority given, and
(ii) if it has not been in the possession of another person through a prior written document or demonstrated to another person in the meantime.
Simply put, newness requires absolute novelty. The Patent Act of India requires an invention to be both globally novel and also globally known by the time of the priority date.
Prior Art and Anticipation
Prior Art refers to all public knowledge of the world at large, known to the world at large prior to the priority date, with the exception that it does not qualify as an “innovation” if it has no features of the invention. Also Prior art may include, but is not limited to patents, articles, books, conference papers, product demonstrations or information that is available to the public on the Internet. If there is one piece of prior art that includes every essential feature of the claimed invention, then the invention is fully anticipated.
Anticipation occurs when:
(i) there has been a disclosure of the invention prior to the filing of the application (that is, through written or electronic publication), or
(ii) the invention has been made available to the public prior to the filing of the application (through commercial or public use), or
- the invention has been made available to the public prior to the filing of the application but only has been disclosed orally (by way of oral communication).
Judicial Interpretation
Courts in India have always been of the opinion that novelty should be strictly judged. The Supreme Court ruled in Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries that a patent should not be granted for merely rearranging or repeating devices that are already known, and again in Enercon (India) Ltd. v. Aloys Wobben, when they stated that if an invention has been made available to anyone in the public; it should not be considered novel any longer.
Illustration
If someone files a patent for a machine which has been previously described in a foreign country (even if it has never been used prior) then the invention would not pass the novelty requirement under Indian law; this is an example of how strictly India treats the necessity for something to be novel prior to granting the patent.
Inventive Step (Non – Obviousness)
Definition and Purpose
The inventive step requirement indicates that an invention must have some form of advance or development beyond that currently present within the technical field. Inventive step is defined in Section 2(1) (ja) of the Patents Act as an element of an invention which demonstrates a major advancement in technology or adds value to society due to its commercial viability. The purpose of this requirement is to prevent patents from being granted for mere changes or improvements to existing technologies.
Assessor of Inventive Step
The expert assessor of inventiveness (called “the person skilled in the art”) possesses relevant technical knowledge but is assumed to have average intelligence per the test for determining whether there is inventiveness. If a person skilled in the art can create an invention using no creative thinking, then it cannot be patentable due to lack of inventiveness.
Tests Applied for Inventive Step
The tests that are used by the Indian courts and patent office to determine whether an invention qualifies for an inventive step include the following:
The following criteria can be used to assess whether an invention has;
A technical solution to the technical problem being addressed
A technical improvement over prior art
And Would have been obvious to a skilled person in that field at the time the invention was made.
Using a “problem-solution” approach is one of the common techniques for determining whether an invention has an inventive step. This approach involves defining the underlying problem being addressed by the invention and then comparing the solution proposed by the invention against the solutions offered in the prior art to determine whether the solution would have been obvious.
Judicial Interpretations
In Novartis AG v Union of India, the Supreme Court held that incremental pharmaceutical inventions must have an improvement on the therapeutic efficacy in order to satisfy the inventive step test.
Additionally, the Delhi High Court rejected the assertion of the commercial success of an invention as the basis for establishing the inventive step of the invention as an objective standard when making a determination regarding inventive step in F. Hoffmann-La Roche Ltd v Cipla Ltd.
Inventive steps
Section 3(d) is an extremely important provisions when assessing whether or not an invention satisfies the requirement of inventive step; this applies particularly in the case of pharmaceutical patents. This section of the Indian Patents Act prevents a practice known as “evergreening”, which is where a patent is taken out for a new form of a known substance, unless it provides an increase in therapeutic efficacy. This provision is a direct reflection of India’s public health-based patent policy.
Industrial Use (Utility)
Definitions/Scope of Industrial Use (Utility)
A valid industrial use is a requirement to determine usefulness of an invention. Inventions must meet the definition of invention as defined in §2(1) and should have a potential for actual application (i.e., must be capable of being manufactured and/or used).
The term `Industry` is to be interpreted in a broad sense and includes all kinds of commerce such as; manufacturing, agriculture, pharmaceuticals, biotechnological, IT, and service industries.
Judicial Interpretation
In Indian Vacuum Brake Co. Ltd. v. E.S. Luard, the Courts have stated that to have proper and important utility in an industrial use (utility), an invention must have practical utility (use) and the practical utility or use must be established before the invention is deemed to meet the requirements for industrial use (utility). An invention lacking actual, functional or practical use (use) powers will not meet the statutory requirement for industrial use (utility).
Example illustration
A mathematical equation or scientific theory only is not patentable; however, if the theory or equation is used as part of an apparatus or method to produce something with actual substance (object) then the invention would meet the definition of an industrial use (utility).
Comparative Analysis and Practical Challenge
India has patentable agreements with other countries; however, they have additional restrictions than what is offered in those other countries, particularly in pharmaceutical and biological technology areas. The United States uses a much more relaxed method for obtaining a patent but in India the need is concerned with protecting individual rights through access and ensuring the broader needs of the general public.
To prove their inventions were unique, inventors have major difficulties proving the uniqueness of their invention because there is so much worldwide prior art currently available to refer to in order to do so.
In order to avoid rejection from a patent office due to unprofessional patent specifications, inadequate experimental evidence supporting the patent application, and insufficient detail provided in the patent specification; inventors should be diligent in preparing a complete set of patent claims with adequate technical support prior to filing their patent application with the appropriate patent office.
Conclusion
The overall goal of patent rights is that patents should be issued only for those inventions that are truly deserving of a patent, and that the patent system also serves to protect society from the monopoly that can result from the granting of patents to individuals through the satisfaction of appropriate patentability criteria. The patentability requirements of novelty, inventiveness, and industrial application also have been further clarified through judicial decisions; therefore, any individual inventor or researcher in India should be aware of these patentability requirements in order to maximise success with the Indian patent system.
To sum up, novelty, inventiveness, and industrial applicability are the basic tenets of Indian patentability and will continue to ensure that patent protection is only available for acceptable innovations that represent meaningful advancements in technology. There is an increasing need for all inventors and lawyers representing inventors to understand what constitutes patentability as technological development continues at an increased pace due to advances in technology.
