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Patentability

Source  : http://www. Author  : mohanroy Published on : June 06, 2010

What Is Patent? A patent an exc lusive lusive right granted to a person who has invented a new and useful article or an improvement of  an existing article or a new process of making an article ensuring that no other person may make, use, distribute or sell any commodity which uses this product or process. Hindustan Lever v Godrej Soaps (1997) PTC 756 A monopoly right in respect of an invention – Halsbury’s Laws of England  Patent right is a right secured by a patent, usually meaning a right to the exclusive manufacture, use and sale of  an invention or patented a rticle. – Blacks Law Dictionary, Dictionary, 8th Ed  In India term of patent is 20 years. Why Grant A Patent? Patent owner has an exclusive right right to prevent others from: # making # using # offering for sale # selling # importing # the patented invention

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Adv. Mohan Roy

Mathews is a law graduate National University University of Advanced  Legal Studies, Cochin and is currently working with a law firm in Bangalore.

Product and Process Patent A product patent allows rights rights (including exclusive manufacturing and marketing rights) rights) relating to an object, while a process pate nt relates to a means of making that object. A product-patent system means that the end results, i.e. the product is patented and not t he process by which it is made. Only process patent was available available in India prior to 2002 in spite of the fact that the TRIPS agreement agreement provided for product patents. After the 2002 amendment to t he Patents Act, India follows follows both the product and process-patent systems. For the pharmaceutical, drug, food  and chemicals industries, we follow follow process patents, while while for all other industries the product-patent system. A product pate nt grants more  benefits to the owner. Conditions For Patentability

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 Definition of Invention Section 2 (j): Invention means a new product or process involving an inventive step and capable of industrial application  Novelty Section 2(1)(l) of the Patents Act defines a “new invention” as 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 the patent application with complete specification, i.e., the subject mater h as not fallen in the public domain or that it does not form part of the state of art The essence of the novelty requirement is encapsulated by the Bombay High Court in Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning a Corporation etc. v. Unichem Laboratories and Ors., [1]where the High Court stated that, “ To anticipate a patent, a prior publication or activity must contain the whole of the invention impugned; …. In other words, the anticipation must be such as to describe, or be an infringement of the c laim attacked.” Prior Publication General tyre v. Firestone tyre If the prior invention’s publication contains a clear description of or clear instructions to do or make, something that would infringe the  patentee’s claim will have been shown to lack the novelty.

If the prior publication contains directions which is capable of being carried out in a manner which would infringe the patentees c laim, but would be at least as likely to be carried out in a way which would not do so, t he patentees claim will not have been anticipated although it may fail on the ground of obviousness. To anticipate the patentee’s claims the prior publication must contain clear and unmistakable directions to do what t he patente e claims to have invented: Flour Oxidizing v. Carr[2] The information given by prior publication must, for the purpose of practical utility, be equal to th at given by the subsequent patent . In some cases the skilled reader may require the language of pub lication to be translated for him. He may also require the meaning of technical terms or ideas which he is not familiar with, ascertained from a scientists. But once he has got t his he must be able to make the machine from what is disclosed by prior publication.[3] When the matter in question is distributed with the object of spreading the knowledge among the interested parties, it would const itute  publication. However, where the document relied upon fro the prior publication was sent from one partner to the other partner in design  project which they ha agreed to undertake as a joint venture, it has been held that such transmission could not make the document available to the public.[4] Prior disclosure orally also constitute prior publication. The question whether t here has been prior publication is, had the information been communicated to any member of public who was free in law or equity to use it as he pleased……. If so, the information, of course, had been given to a member of the public, and there was nothing further to serve as consideration for any pat ent.[5] It is sufficient that the invention is  prior published. Its is not necessary that it should be used by public. Prior Claim

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The invention so far as claimed in any c laim of the complete specification is claimed in a claim of a complete specification published on or  after the priority date of the applicant's claim and filed in pursuance of an application for a patent in India, be ing a claim of which the priority date is earlier than th at of the applicant's claim.[6] It must be shown that a c laim in the paten t sought was the subject of an identical claim in a patent of ea rlier priority and the earlier claim is valid. It is not sufficient if the claim is merely comprehended in the subject matt er of a claim in the cited specification. The earlier claim may be t he subject of a patent granted or the subject of a pending application. Prior claiming may arise in three instances. First, using the special analogy, where the earlier claim lies wholly within the area of the latter claim; secondly where the areas of the earlier  and latter claim are not coterminous but overlap; and thirdly where the ea rlier claim is broader than and includes within it the area covered by the later claim. Prior Use A claim in a patent will be invalidated if it has been publicly used before the priority date of the c laim. Secret use of the invention will not be taken into account. The word ‘secret use’ has been substituted by the words ‘personal document or secret trial or secret use’, by the Amendment Act of 2002. Public use does not mean use by the public, but use in a public manner and not secretly.[7]

A use of the invention for the purposes of tra de may constitute a public user which invalidates the patent, and it has been held that the prior   public sale of the good or articles treated according to the invention is a public user. But in order for the sale to constitute sufficient evidence of public user it should be open and in the ordinary way of business.[8] Section 64(3)(a) permits use for the purpose of reasonable trial or experiment. A man is entitled to experiment and test the results of his invention before the priority date and there is no publication in such use if proper secrecy is maintained. He is entitled to have the assistance of experts to tell him what things can be done and what things cannot be done. But he is not entitled to put those things on the market.[9] When an article is manufactured and sold, and, from the inspection of it, it is possible for the vendee to ascertain its component elements, or  the main principles of its construction, then t here has bee n publication by prior user. Exceptions: Novelty will not be lost in the following case (Sec. 29-33): · Prior Publication in a specification before 191 2 (Sec. 29) · Prior Publication w/o Consent (Sec. 29(2)) · Communication to Government (Sec. 30) · Public Display at the Exhibition (Sec 31) · Public working (Sec. 32) · Publication after Provisional Application (Sec. 33) Inventive Step

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Article 27 of the TRIPs Agreement lists out the requirement of non – obviousness or inventive step as does Section 2(1)(ja) of the Indian Patents Act. Section 2 (ja) "inventive step" means a fea ture of an invention that involves technical advance as compared to the existing knowledge or  having economic significance or both a nd that makes the invention not obvious to a person skilled in the art;" · To be patentable t he invention should not only be New but also Inventive i.e.; it should not be “obvious” to the person skilled in the art · Invention must possess qualitative advance over earlier technology · Mere workshop improvements will not constitute inventiveness · Improvements made with a degree of ingenuity and skill constitute inventiveness · A combined knowledge of prior art references can d estroy the inventive step Test for inventive step The test to ascertain whether an invention involves an inventive step is expressed in Halsbury Laws of England as: ‘was it for pract ical  purposes obvious to the skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he should or would make the invention the subject of t he claim concerned.’ In other words, the question to be answered in d etermining inventive step is ‘Would a non-inventive mind have thought of the alleged invention?’ If the answer is ‘no’, then the invention is non-obvious. If the patent claimed merely includes the development of some existing trade, in the sense that it is a development as would suggest itself to an ordinary person skilled in the art, it would fail the test of non-obviousness.

The courts also have at times held that the inventive step or obviousness has to be judged from the point of view of a person skilled in the art.[10] A person skilled in the art should be presumed to be an ordinary practitioner aware about what is common knowledge in the relevant art at the relevant time. How far such knowledge anticipates the new invention is a question of fact depending on the facts and circumstances of the case.[11] The invention is to be considered as a whole for assessing the inventive step and a conclusion cannot be drawn merely  because an individual element of the claim taken separately is known or might be found to be obvious. In order to deprive an invention of   patentability on the ground of anticipation by prior publication, it must be shown that the invention claimed was published in any documents  prior to the date of the application.[12]  Biogen v. Medeva, [1997] R.P.C. 1 · If it was the idea of using established techniques to do something which no one had previously thought of doing, the inventive idea would be doing the new thing. · If it was finding a way of doing something which people had wanted to do but could not think how, the inventive idea would be the way of  achieving the goal. · If many people might have ha d a general idea of how they might achieve a goal but not know how to solve a pa rticular problem which stood  in their way, and someone devised a way o f solving the problem, the inventive step would be that solution, but not the goal itself or the general method of ac hieving it.

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A skilled person would be a person who ‘has experience of the field in question and he may be one who have ava ilable assistants who would  carry out tests’.[13] In order to pa ss the test of obviousness, the prior art referred above must be of such nature as t o inform the skilled person as to how the invention derived from the prior art is to be p erformed. In other words, the person skilled in the art must have the ne cessary information (through the prior art) to take the inventive step in question.[14] In determining whether an invention involves an ‘inventive step’ and is ‘non-obvious’, the supervening policy of patent law viz. to reward and  encourage invention without inhibiting improvements of e xisting technologies by others must be kept in mind. Although no absolutely uniform test for determination of inventive step can be formulated, certain broad criteria can be indicated, whether the invention was publicly known, used or practiced before or at the date of the patent? If the answer is positive, it shall negate inventive step.  A structured approach to determine obviousness consisting of four steps was expounded in Windsurfing International v Tabur  Marine[15]: a) Identify the inventive concept in the suit  b) Keep in mind a normally skilled, but unimaginative person having common general knowledge of the concerned art as at the priority date will be the date from which the objector t o the patent would allege inventive step was obvious c) Through the spectacles of t he aforesaid skilled person identify differences, if any, between the matter cited as being known or used and the alleged invention; d) Finally, without considering the alleged invention, consider whether the differences would see to the aforesaid skilled person such as leading obviously to the alleged invention or that a degree of invention would be necessary to obt ain the invention.  In Bishwanth Prasad’s case, the apex court reiterated the above test and suggested three alternative conceptions of the same: a) Whether the alleged invention lies so much out of the track of what was known before as not natura l to suggest itself to a person thinking on the subject, it must not be the obvious or natural suggestion of what was previously known;  b) Had the document been placed in the hands of a competent draftsman, or engineer, (as distinguished from a mere artisan), endowed with the common general knowledge at the ‘priority date’, who was faced with the problem solved by the patentee , but without knowledge of the  patented invention, would he have said, this gives me what I want? c) Was it for practical purposes obvious to a skilled worker n the field concerned, in the state of knowledge existing at the date of the patent, to find in literature then available to him; that he would or should make the invention the subject of the claim concerned.  Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511 · Is improvement patentable? “It is important to bear in mind 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 independe ntly satisfy the test of invention or an “inventive step” . To be paten table the improvement or the combination must produce a new result, or a new article or a b etter or  cheaper article than before” Polar Industries Ltd. Vs. Jai Engineering Co. Ltd.[16] (1991)

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Mere Addition / Alteration To Existing Device Not Patentable Indian Patent No. 155307 relating to split type lower socket for use in ceiling fans for clamping the shaft of motor of ceiling fan to lower end  of a rod, the upper end being fixed to a hook in the ceiling. Suit for infringement of patent was filed. The defendant - count er claimed for revocation alleging that the subject matter was obvious as clamping rods for ceiling fans was well known and the modification in the socket was a workshop improvement. Held : The fact that Controller has granted a pat ent does not give rise to presumption of validity. For improvement to be patentable it was not enough to incorporate what was already known with minor changes, components or collection of co mponents or things. Mariappan v.A.R. Safiullah[17] (2008) An "inventive step" which is a necessary ingredient of invention in order to make an Applicant eligible for grant of paten t under t he Act, must  be relating to an invention involving technical advance or having economic significance or both along with a necessary factor that such invention should make it not obvious to a person skilled in the art Product: Artificial banana leaf made using food grade laminated pape r  Decision: Injunction granted  Reason: Even though the ba nana leaf is a natural product, the invention on the part of t he applicant/plaintiff to use artificial laminated  food-grade shape in the form of banana leaf with its colour with artificial scented smell is prima facie innovative and that in view of t he Patent granted in his favour for the said product, plaintiff is entitled for protection pending disposal of the suit. Dhanpathseth vs Nilkamal Plastic Crates[18], HC (HP), 2007 Product: Plastic Kilta with adjustable nylon straps Decision: Injunction denied  Reason: Substitution of bamboo with plastic is not a new invention; Device developed as a result of traditional knowledge and aggregation/ duplication of known products and is not an invention; hence no injunction available in this case Utility It is pertinent to note t hat utility was not a requirement for patentability under the Pate nts and Designs Act, 1911. In Bishwanath Prasad’s case, the Supreme Court recognized utility as one of the grounds on which a pat ent can be revoked. Now one of the e ssential requirements of  a patentable invention is that it should be useful. The usefulness of the invention is to be judged, by the reference to the state of things at the date of filing of the patent application, if the invention was then useful, the fact that subsequent improvement have replaced the pat ented  invention render it obsolete and commercially of no value, does not invalidate the patent.

The phrase “ capable of industrial application” implies usefulness or utility. Section 2(1)(ac) defines “ capable of industrial application” in relation to an invention, to mean that the invention must be capable of being made or used in an industry. Lack of capability of being used in an industry is a ground for revocation of the patent under Section 64(1) (g).

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The utility of the pa tent must be judged by reference to the state of t hings at the date of the patent; if the invention was then useful, the fact that subsequent improvements have replaced the pa tented invention and rendered it obsolete and commercially of no value, does not invalidate the patent.[19] The general rules is that the utility of an invention depends upon whether, by following the directions of the patentee, t he results which the  patentee professed to produce can in fact be produced. [20] But want of utility in this sense should be distinguished from want of utility in the sense of the invention being useless for any purpose. In the absence of a ny promise in the specification that a definite degree of advantage would result from the use of the invention, the amount of utility required to support a patent is ve ry small. It is not necessary that the invention as described should be commercially useful, unless the specification promises that it would be, and that it is sufficient the invention should, by reason of the features that distinguish it from earlier proposals, be of some use to the public. It is also not necessary t hat a result should be obtained by using the invention, and tha t the test is whether the new method ‘gives the public a ‘useful choice’.[21] What Are Not Patentable? Section 3, 4 & 5 of the Patents Act, 1970

The main categories, which do not qualify for patentability under the IPA are: # An invention, whose use could be contrary t o the public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment. For example, a new type of gambling machine. # Inventions relating to atomic energy. This is so because the Central Government has the sole responsibility for the development of atomic energy and for obvious reasons will not like its programmes to be hampered by pat ent claims. # An invention which is frivolous or which claims anything obviously contrary to well established natural laws. For example, an invention tha t claims a perpet ual motion machine will not be patentable beca use the claim would be contra ry to well-established laws of nature. # The mere discovery of a scientific principle or the formulation of an abstract theory. For example, a d iscovery merely unveils a hidden thing; it does not involve an act that makes it useful; it is therefore not an invention and hence not patenta ble. Similar reasoning applies to the formulation of an abstract th eory. [S 3(d)] # Discovery of any living thing or non-living substances or objects oc curring in nature; # A substance obtained by a mere admixture of the components, or a process of produc ing such mixture; # Mere arrangement or rearrangement or duplication of known devices, each funct ioning independently of one a nother in a known way without changing the end results; # An invention which in effect is traditional knowledge; # A mathematical or business method or a computer programme per-se or algorithms. Novartis AG v. Union of India and others (2007 Madras) # Challenged the constitutionality of section 3(d)

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Violate of Article 14  Not complied with TRIPS Agreement # Regarding non compliance the court he ld that domestic court has no jurisdiction # Held that 3(d) not violative of Article 14  Besides these rather obvious items the following items are also not inventions within the meaning of the Patents Act, as a matter of policy  and are therefore, not patentable: # A method of agriculture or horticulture; # Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings and animals; # Plants and animals in whole or part thereof othe r than micro-organisms; # Seeds and biological processes for production of plants and animals; The following two categories belong to different fields of i ntellectual property and are not subject matter of patents: # A literary dramatic, musical or a rtistic work including cinematographic work and television productions (The Copyright Act); # Topography of integrated circuits (The Semiconductor Integrated Circuits Layout – Design Act, 2000).

 In the case of substances falling within certain categories no claim for patenting the substance can be entertained; however, claims for  the methods or processes of manufacture of these substances can be patented. Such categories of substances are: # Substances which could be used as food or medicine or drug; # Substances prepared or produced by che mical processes (which include biochemical, biotechnological and microbiological process). However a claim for patenting a substance can be entertained if the substance itself is intended for use as medicine or drug – excepting chemical substances which are ordinarily used as intermediates in the preparation or manufacture of any medicines. Computer programmes and microorganisms have emerged as t wo special categories where patent protection is increasingly sought. -------------------------------------------------------------------------------[1] AIR 1969 Bom 255 [2] (1908) 25 RPC 428 [3] Van der Lely v. Bamfords [1963] RPC 61 at 71 [4] Dalrymple’s Appln, [1959] RPC 449 [5] Monsanto Co’s Applin. [1971] RPC 153 [6] Section 25(1)(c) of The Patents Act, 1970 [7] Lallubhai v. Sankalchand, AIR 1934 Bom 407 [8] Lallubhai v. Chimanlal, AIR 1936 Bom 99 [9] Hudson v. Barringer (1906) 23 RPC 79 [10] Kishore Mahadeo Pole, G.M. Walchnad Nagar Industries Ltd v. Thermax Pvt . Ltd 1988 PTC 213 [11] Lallubhai Chakubhai Jariwala v. Chimanlal Chunilal and Co. AIR 1936 Bom. 99

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[12] Bomay Agarwal Co., Alola v. Ramchand Diwanchand, AIR 1953 Nag.154 [13] PLG Research v Ardon 1993 FSR 197, 207 [14] Hallen v Barbantia 1991 RPC 195, 212 [15] Windsurfing International v Tabur Marine 1985 RP C 59 [16] 1991 IPLR 150 [17] 2008(38)PTC341(Mad) [18] Decided September 20, 2007 by Himachal Pradesh High Court [19] Edison and Swan Electric Light v. Holland ( 1889) 6 RPC 243 [20] Lane Fox v. Kensington etc. Co, (1892) 9 RPC 413 a t 417 [21] F.H. & B. Corporation v. Unichem Laboratories, AIR 1969 Bom 255

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