Abstract
The following paper discusses the patentability requirements according to the Patent Act of 1970. This also caters to its readers with respect to the types of patent applications. The paper also peeks into the procedure of the filing of the patent but doesn’t dwell deeply into it and tries to give an overview regarding the same. Further, it also discussed the criterion on which a particular invention is not granted, Also some case laws are mentioned to satisfy the legislative understanding needs. The paper also presents an idea of what led to the evolution of patents in India i.e., the requirements and regulations posed by WIPO and TRIPS and the amendments in the patent law which followed.
Keywords
Patentability, Novelty, Inventive step, Inventions, Patents, Patent Applications, WIPO, TRIPS
Introduction
Patents in India are granted to inventions based on novelty, inventive steps, and industrial applicability. Inventiveness suggests that it must be a new invention that has not been published in a printed publication and on which the patent application is filed it should not be obvious to an expert in the field. Patentability in India is determined by several factors. The Patents Act of 1970, specifically excludes inventions that: are contradictory to public policy or morality fraudulent or deceptive inventions intrinsic to impair the free movement of goods or services. India’s patentability criteria aim to balance the rights of innovators with the promotion of innovation. It considers economic uplift and social well-being in tandem.
In India, the patentability criteria are designed to guarantee that patents are only granted to genuinely innovative inventions that can benefit society. Patents protect patent holders from unauthorized copying, which in turn stimulates investment in R&D to make the product commercially viable and make new and better products and services.
The Supreme Court in Bishwanath Prasad Radhey Shyam case 1 resonated with the aforementioned idea and added that the “purpose of an invention is to protect and promote fair competition in technology to transform the creations into being productive in nature”.
No one size fits all such as Indian patent law doesn’t mention software inventions in it, the courts have interpreted it to include them in the scope of patentability. With some doubt about the issue lurking around, there have been a few cases in which software inventions were granted in India. For instance, a software-based invention demonstrating technical effect is patentable the Delhi High Court upheld the patent in 20142. Thus, moreover, the Indian Patent Office (IPO) has adopted a generally positive stance towards software inventions, and looking at the pace of growth of the digital industry such patents are set to increase in numbers.
Research Methodology
This research paper is written with the agent of creating an understanding of the provisions regarding the patentability of an invention. Multiple secondary sources in the form of research papers, books, articles, govt. guidelines, blogs by industry experts, international advisories, and such standards were referred to which acted as a model to make this work informative and efficient. Apart from the aforementioned sources my limited knowledge of the matter also helped to present the realities and materialistic elements with respect to the topic. This research paper is written with a specific research area that confines itself to Indian patent laws. This research paper has been written with utmost simplicity and in original form i.e., in the words of the author, and references wherever used have been cited at the end.
An insight into various modes of application for patents
In India, there are primarily 7 types of patent applications each of which addresses a specific purpose and contains a description of the invention, added with official forms and correspondence relevant to the application.
Provisional Application: Since the Indian patent office follows a first-come-first-served style of the application system, some inventions that are at the pre-final stage file such applications to gain priority. “Also, by doing so the applicant gets 12 months time period to develop the invention and determine its market potential but by failing on this timeline the application gets rendered void”3.
Ordinary or Non-Provisional Application: “This is filed when the applicant doesn’t have any priority to claim. This application isn’t filed ensuing any previous convention application”3. The major requirement of this application is that it describes the invention fully and completely along with a complete set of claims and specifications. “It can also be filed subsequent to the filing of the corresponding provisional specification and claiming priority therefrom”.
Convention Application: “A Convention Application is filed for the purpose of claiming a priority date on the basis of a similar or substantially similar application submitted in any of the Convention Countries. In order to obtain the status of a Convention, an applicant must submit an application to the Indian Patent Office no later than 12 months after the initial submission of such an application in the Convention Country”3.
PCT International Application: Governed by Patent Corporation Treaty (PCT) and validated by 142 countries it paves the way for a patent application in many countries thus filing it would protect the invention from replication in these countries. “It provides a time frame of up to 31 months for the application to enter these countries from the international filing date or priority date. It can be filed at the Indian Patent Office (IPO), which acts as the receiving office, or The International Bureau of WIPO, either after availing a foreign filing permit from the IPO or after 6 weeks and 12 months of filing an application in India”3.
“There are other benefits such as International Search Report citing prior art, which gives a suggestion to the applicant whether his invention is novel. It also provides an option for requesting an International Preliminary Examination Report, which contains an option on the patentability of the invention”18. This provides the applicant with the opportunity to make more selective and informed decisions at an early stage of the grant process and to amend the Patent application accordingly to address any conflicts of substance or material.
PCT National Phase Application: When an application is prepared and submitted for an international application under PCT designating India, the applicant must submit the national phase application within 31 months of the priority date (or the international filing date whichever is earlier) in India. “For National Phase Application, the title, description, abstract, and claims as filed in the International Application shall be considered as the Complete Specification”3.
Patent of Addition: “When there is slight modification or improvement in the earlier invention for which the applicant has already applied or has obtained a Patent, in such a case the applicant can go for a Patent of Addition free of charge also the patent of addition expires with the main patent”3.
Divisional Application: If an applicant claims more than one invention in a particular application, they can split it and submit two or more applications. “These applications have the same priority date as the parent application”18.
To have a stronghold on one’s novel idea to get a patent on it there are precautions that need to be taken. While disclosing the idea to any organization or even to a patent professional one should enter into a non-disclosure agreement, even if the disclosure is part of a procedural requirement. Also, getting a patent search done helps sort out multiple hiccups that may arise. Such as how likely is it that a proposed invention will be granted a patent. What patent rights should be included in the patent application? What is operating freedom? How can a granted patent be invalidated? etc.
On the other hand, drafting the patent application is the most crucial step of all as it contains the crux of the inventive step. One can’t afford a “snag in the fabric” when it comes to this document as it contains multiple clauses and descriptions about the invention. Now thereafter follows the filing of the patent, publication of the patent application, and then scrutinization of it. After all of this, the patent is either granted or rejected.
The requirements and criteria for patentability
To be classified as a patentable invention the subject has to go through certain benchmarks and tests to check the worthiness of the invention for a patent grant from various perspectives.
The Act states that a patent can be granted for a novel or new invention as defined in section 2(1)(l)4 that “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 a patent application with complete specification.” The definition of an invention is set out in Section 2(1)(j)5 of the Act, which states that a “new product or process containing an inventive step is capable of being put to industrial use”. The terms novel, inventive step, and industrial application – form the three primary criteria for being patentable. Section 2(1)(ja)6 defines the Inventive step “as 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.”
The most important case for inventive step jurisprudence was Biswanath Prasad Radhey Shyam’s case. “Also, this case is a landmark in understanding the importance of the non-obviousness of an inventive step. The Court began its analysis of the concept of inventive step by observing that, in order for an invention to be patentable, it must be an improvement on something already known or a combination of various matters already known. This improvement or combination must not be merely a workshop improvement, but must independently meet the criteria of an invention or inventive step. To be patentable, the improvement or combination must lead to a new result, a new subject matter article, or a better or cheaper product than the existing one. According to the Court, an invention would possess an inventive step if it combines two or more known integers in such a way that, by their working together, they result in a new process or an improved result. Therefore, mere collocation of multiple integers or things, which does not involve the exercise of inventive faculty, would not be sufficient to grant a patent. Moreover, an invention cannot be the obvious or natural suggestion of something already known, and if a person could have made the invention on the basis of knowledge existing on the priority date, it would not possess an inventive step”1.
Also, the industrial applicability of the invention is a major requirement as described in Section 2(1)(ac)7. It suggests That a product based on this invention can be produced and used commercially. The definition of industrial applicability is tweaked by little differences in different jurisdictions. In the case of Cipla vs Roche8 definition of the invention and industrial applicability, was discussed and upheld. The Delhi High Court said that the product must be commercially useable. Similarly, in the case of India Vacuum Brake Co9, the Calcutta High Court reiterated that the term utility used in the act is not merely usefulness it must have an industrial applicability.
It is also important to discuss the provisions laid down in Chapter 2nd of the act as it briefly discusses the criterion for inventions being non-patentable. Section 310 and Section 411 of the act enumerates the points which are to be kept in mind while examination of the invention. Section 310 says that Inventions that are not grounded in scientific principles or abstract theories, or that are the result of the mere arrangement, rearrangement, or duplication of existing knowledge or devices, are prohibited. Examples of such inventions include agricultural or horticultural methods, treatments for humans, animals, or plants, mathematical, business, or algorithmic methods, literary, dramatic, or artistic works, presentations of information or processes, and topography. Any false or frivolous applications are also not entertained. Also, Section 411 of the act states “No patent shall be granted in respect of an invention relating to atomic energy”
In the case of Novartis12, the Supreme Court gave a negative ruling to Novartis, saying that the new version of Gleevec didn’t meet the higher level of effectiveness required by section 3(d)13. It said that “efficacy” means “therapeutic efficacy” and that even a small improvement in efficacy didn’t meet that standard.
Novartis argued that the polymorph form of imatinib, due to its improved flow properties, thermodynamic stability, and hygroscopicity, could be patented under Indian law due to its improved efficacy. However, “the Apex Court rejected this argument, ruling that in the context of medicinal products, efficacy referred to “therapeutic efficacy” and those polymorphic properties, while beneficial to some patients, did not meet that standard. In the words of the Supreme Court: ‘Evergreening’ is a term used to label practices that have developed in certain jurisdictions wherein a trifling change is made to an existing product, and claimed as a new invention. The coverage/protection afforded by the alleged new invention is then used to extend the patentee’s exclusive rights over the product, preventing competition”12.
Patentability/Restrictions according to the WIPO
The legal requirements for patentability as per WIPO are similar to as mentioned in Indian law. Patentable inventions, Novelty, Inventive step, and Industrial applicability along with disclosure requirements, are what WIPO lists as principal requirements for a patent to be granted14. It also lists the requirements for non-patentability such as. discoveries, mathematical theories, aesthetic creations, playing games, software (however, software-implemented inventions might be patentable i.e., “invention involving an apparatus or process which makes use of software, e.g., a specific computer chip with software stored on it), methods of doing business, Therapeutic and diagnostic methods, Inventions contrary to morality, and Plant or animal varieties”14.
Also, The Standing Committee on the Law of Patents has determined that the laws of many countries offer exemptions and restrictions to patent rights, “including but not limited to private and/or non-commercial usage; experimental usage and/or scientific research; extemporaneous preparation of medicinal products; prior usage; use of products on foreign vessels, aircraft and land vehicles; acts for obtaining regulatory approval from authorities; exhaustion of patent rights; compulsory licensing and/or government usage; certain use of patented inventions by farmers and breeders”14
Trips Agreement with respect to patents
The TRIPs Agreement is a global agreement between all WTO member countries that sets minimum requirements for the regulation of various forms of Intellectual Property (IP) by national governments of other WTO member countries. It was negotiated at the conclusion of the GATT 1989-1990 Round and is managed by the WTO. The Agreement outlines seven primary areas of IP: Patents, Copyrights, Trademarks, Geographical Indications, Industrial Designs, Layout-Designs of Integrated Circuits, and Undisclosed Information. In the area of Patents, the Agreement requires countries to grant patents for any invention, whether product or process, in any field of technology, without discrimination. The basic rule on Patentability is subject to three exceptions: Inventions contrary to an order of the public or morality, Diagnostic, Therapeutic, and Surgical Methods for the Treatment of Humans or Animals, and Plants and Animals other than Micro-organisms and essentially Biological Processes for the Production of Plants or Animals.
It also regulates the exclusive rights granted by patents, the restrictions on those rights, and the duration of patent protection and establishes minimum standards for compliance with the Agreement. TRIPS agreement also permits compulsory licensing and governmental use under certain terms and conditions in order to safeguard both the patent proprietor’s rights and the public interest. The terms and conditions take into account the value of the licensing and may include judicial review. In the IPIC Treaty, layout-design protection applies to the arrangement of elements within integrated circuits, necessitating originality and commercial worth. Protection is provided for unfair use and disclosure. Protection is extended to undisclosed test data necessary for the marketing of pharmaceuticals or agricultural products, protecting against unfair use and providing data protection15.
As far as India is concerned it signed and acceded to the PCT in 1998. The provisions relating to filing systems under the PCT were incorporated in conformity with Articles 70.815 and 70.915 of the TRIPS agreement, into the Patents (Amendment) Act of 199916. To bring the patent act into further compliance with the TRIPS agreement there were other amendments which were brought in 2002 and 2005. The 2002 Act introduces a new twenty (20) year patent term, which brings this section into line with Article 33 TRIPs Agreement, “which stipulates that the patent term should be applicable for a period of 20 years from the date on which the application is filed”17.
Conclusion
The Supreme Court via the Novartis case decision changed the field of medicine, especially in cases of life-saving drugs12. It was especially a huge relief for those people who can’t afford the lifesaving drugs manufactured by these big pharma giants. The Supreme Court with the help of this case also tried to put forth the commitment that India needs to express in front of the world. Thus, granting the full scope of these rights in all situations may not always be in accordance with the ultimate objective of the patent system, which is to promote the general well-being of society. Consequently, the scope of enforceable exclusive rights under national patent laws may be determined in accordance with certain exceptions and restrictions to patent rights reserved for decision by each country, in order to balance the interests of the right-holders, third parties, and the public. This balancing of interests is affected by the socioeconomic situation and priorities of each country, which is why the exceptions and limitations in patent laws differ from country to country. Apart from this, there are still some challenges faced but the Indian patent system such as no special IP court structure or tribunal for redressal and the length of time involved in most of the patent lawsuits which delay the enforcement of the rights of the patentee.
References
[1] Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries, AIR 1982 SC 1444
[2] Ferid Allani vs Union Of India & Others, WP(C) 7 of 2014
[3] Sreeram Viswanath, Types of patent application India Filings (2023), https://www.indiafilings.com/learn/types-of-patent-application/.
[4] Section 2(1)(l), in The Patents Act, 1970: (39 of 1970). (2009).
[5] Section 2(1)(j), in The Patents Act, 1970: (39 of 1970). (2009).
[6] Section 2(1)(ja), in The Patents Act, 1970: (39 of 1970). (2009).
[7] Section 2(1)(ac), in The Patents Act, 1970: (39 of 1970). (2009).
[8] Cipla Ltd. vs F. Hoffmann-La Roche Ltd. & Anr. [2008 (37) PTC 71 (Del)]
[9] Indian Vacuum Brake Co., Ltd. v. E.S. Luard, A.I.R. (1926) Cal. 152
[10] Section 3, in The Patents Act, 1970: (39 of 1970). (2009).
[11] Section 4, in The Patents Act, 1970: (39 of 1970). (2009).
[12] Novartis v. Union of India & Others (2013) 13 S.C.R. 148
[13] Section 3(d), in The Patents Act, 1970: (39 of 1970). (2009).
[14] Atif W Bhatti, Topic 3: Legal requirements for patentability and typical parts … – WIPO (2017), https://www.wipo.int/edocs/mdocs/mdocs/en/wipo_ip_cnx_17/wipo_ip_cnx_17_3.pdf .
[15] WTO, Overview: the TRIPS Agreement world trade organisation (1997), https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm#:~:text=The%20TRIPS%20Agreement%20requires%20Member,novelty%2C%20inventiveness%20and%20industrial%20applicability.
[16] The Patents Act, 1970: As amended by the patents (amendment) act, 1999, along with the Patents Rules, 1972, as amended by the patents (amendment) act, 1999: With short notes, (2000).
[17] D. P. Mittal, Taxmann’s Indian Patents Law & Procedure: As amended by Patents (amendment) act, 2002 act no. 38 of 2002, dated 25-6-2002 (2002).
[18] Different types of patent applications in India (2020a) Corpbiz. Available at: https://corpbiz.io/learning/types-of-patent-applications-in-india/ (Accessed: 23 August 2023).
Amit Dwivedi
LC2, Faculty of Law, University of Delhi
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