PATENTABLE SUBJECT MATTER

Elements of Patentability

 A patent is granted for an invention which may be related to any process or product.
 An Invention is different from a discovery.
 Discovery is something that already existed but had not been found.
 Not all inventions are patentable. An invention must fulfill certain requirements known
as conditions of patentability.
 The word “invention” under the Patents Act 1970 means “a new product or process
involving an inventive step and capable of industrial application. (Section 2(1)(j)).
 The patent must be in respect of an invention and not a discovery.
 The fundamental principle of Patent Law is that a patent is granted only for an invention
which must be new and useful. That is to say, it must have novelty and utility. It is
essential for the validity of a patent that it must be the inventor’s own discovery as
opposed to mere verification of what was already known before the date of the patent.
 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 independently satisfy the test of invention or
an “inventive step”. To be patentable the improvement or the combination must
produce a new result, or a new article or a better or cheaper article than before.
 “New invention” is defined 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 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 [Section 2(1)(l); Where, capable of industrial application, in relation to an
invention, means that the invention is capable of being made or used in an industry
[Section 2(1)(ac)].
 In Raj Prakash v. Mangat Ram Choudhary AIR 1978 Del.1, it was held that invention, as
is well known, is to find out something or discover something not found or discovered
by anyone before. It is not necessary that the invention should be anything complicated.
The essential thing is that the inventor was first to adopt it.
 Therefore, the conditions of patentability are:
 Novelty
 Inventive step (non-obviousness) and
 Industrial applicability (utility)
 Patentable Subject Matter
 Specification
Novelty

 A novel invention is one, which has not been disclosed, in the prior art where prior art
means everything that has been published, presented or otherwise disclosed to the
public on the date of patent (The prior art includes documents in foreign languages
disclosed in any format in any country of the world.)
 For an invention to be judged as novel, the disclosed information should not be
available in the 'prior art'. This means that there should not be any prior disclosure of
any information contained in the application for patent (anywhere in the public domain,
either written or in any other form, or in any language) before the date on which the
application is first filed i.e. the 'priority date'.
 Therefore, an invention shall be considered to be new, if it does not form part of the
prior art. Although the term prior art has not been defined under the Indian Patents Act,
it shall be determined by the provisions of Section 13 read with the provisions of
Sections 29 to 34.
 An invention shall not be considered to be novel if it has been anticipated by publication
before the date of the filing of the application in any of the specifications filed in
pursuance of application for patent in India on or after the 1st day of January 1912.
 An invention shall not be considered to be novel if it has been anticipated by publication
made before the date of filing of the application in any of the documents in any country.
 An invention shall not be considered to be novel if it has been claimed in any claim of
any other complete specification filed in India which is filed before the application but
published after said application.
 An invention shall not be considered to be novel if it has been anticipated having regard
to the knowledge, oral or otherwise, available within any local or indigenous community
in India or elsewhere.

In Ganendro Nath Banerji v. Dhanpal Das Gupta, AIR1945 Oudh 6, it was held that no general
rule can be laid down as to what does or does not constitute an invention. The general criterion
seems to be whether that which is claimed lies within the limits of development of some
existing trade, in the sense that it is such a development as an ordinary person skilled in that
trade could, if he wishes so to do, naturally, make without any inventive step. But novelty need
only be established in the process of manufacturing, not in the article produced. Novel
combination of two known ideas may be sufficient to establish novelty of subject matter in this
respect.
Inventive Step (Non-obviousness)

 Inventive step is a feature of an invention that involves technical advance as compared

to existing knowledge or having economic significance or both, making the invention
non obvious to a person skilled in art. The definition of inventive step has been enlarged
to include economic significance of the invention apart from already existing criteria for
determining inventive step.
 An invention shall not be considered as involving an inventive step, if, having regard to
the state of the art, it is obvious to a person skilled in the art.
 The term "obvious" means that which does not go beyond the normal progress of
technology but merely follows plainly or logically from the prior art, i.e. something
which does not involve the exercise of any skill or ability beyond that to be expected of
the person skilled in the Art.
 For this purpose a “person skilled in the art” should be presumed to be an ordinary
practitioner aware of what was general common knowledge in the relevant art at the
relevant date. In some cases the person skilled in the art may be thought of as a group
or team of persons rather than as a single person.

Industrial Application

An invention is capable of industrial application if it satisfies three conditions, cumulatively:

 can be made industrally;
 can be used in at least one field of activity;
 can be reproduced with the same characteristics as many times as necessary
An invention to be patentable must be useful. If the subject matter is devoid of utility it does
not satisfy the requirement of invention. 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 improvements have replaced the patented invention
render it obsolete and commercially of no value, does not invalidate the patent. Speculation or
imaginary industrial uses are not considered to satisfy the industrial application requirement.
SPECIFICATION

To obtain a patent, the inventor has to file a patent application containing a specification
(Section 10). The object of the specification is to provide complete information to the public
about the invention and the mode of carrying it out and to define the boundaries of the
invention. The specification has to contain a written description of the invention and of the
manner and process of making and using it. The written description may contain drawings
where and when required to clearly describe the invention. A model or sample may have to be
submitted if the patent office requires such a model or sample as an illustration of the
invention. However, such a model or sample will not form part of the specification. If the
invention involves biological materials, the biological materials may be deposited at a
recognized depository in order to describe the invention and such materials would form part of
the specification.

The specification has to enable the invention, which means it must fully and particularly
describe the invention and its operation or use and the method by which it is to be performed.
It must describe the embodiment of the invention claimed in each of the claims. The
description of the invention must be so clear that any person in the field can carry it out and no
further experimentation must be required to practice the invention. The specification must also
disclose the best method of performing the invention which is known to the applicant at the
time of filing the patent application.

Furthermore, the specification has to end with a claim or claims defining the scope of the
invention for which protection is claimed. The function of the claims is to define the metes and
bounds of the invention claimed in the patent application. Claims in a specification have to
relate to a single inventive concept, and be clear and succinct. The claims must mark out with
adequate distinctiveness, the boundary of the territory of the invention sought to be protected.
The principle idea in the invention has to be presented in the claims and must not be left for
general review of the specification. All claims in the patent have to be supported by the matter
provided in the written description of the specification.

Though the specification requirement is normally not listed as one of the patentability
requirements, it is as important as other requirements. If the invention is not fully described,
claimed, supported or enabled in the specification, the patent application will be rejected.
Through the specification, the inventor has to show that he is not only in possession of the
invention, but also that the invention is workable without undue experimentation.
Non Patentable Subject Matter

An invention may satisfy the condition of novelty, inventiveness and usefulness but it may not
qualify for a patent.
The following are not inventions within the meaning of Section 3 of the Patents Act, 1970:

1. an invention which is frivolous or which claims anything obviously contrary to well

established natural laws;

2. an invention the primary or intended use or commercial exploitation of which could be

contrary to public order or morality or which causes serious prejudice to human, animal or
plant life or health or to the environment;

3. the mere discovery of a scientific principle or the formulation of an abstract theory or

discovery of any living thing or non-living substances occurring in nature;

4. the mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mere discovery of any property
or mere new use for a known substance or of the mere use of a known process, machine or
apparatus unless such known process results in a new product or employs at least one new
reactant; Explanation to clause (d) clarifies that salts, esters, polymorphs, metabolites, pure
form, particle size, isomers, mixtures of isomers, complexes, combinations and other
derivatives of known substance shall be considered to be the same substance, unless they
differ significantly in properties with regard to efficacy.(NOVARTIS PHARMA CASE)

5. a substance obtained by a mere admixture resulting only in the aggregation of the

properties of the components thereof or a process for producing such substance;

6. the mere arrangement or re-arrangement or duplication of known devices each functioning

independently of one another in a known way;

7. omitted by Patents (Amendment) Act, 2002.

8. a method of agriculture or horticulture;

9. any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or
other treatment of human beings or any process for a similar treatment of animals to
render them free of disease or to increase their economic value or that of their products;

10. plants and animals in whole or any part thereof other than micro-organisms but including
seeds, varieties and species and essentially biological processes for production or
propagation of plants and animals;
11. a computer programme per se other than its technical application to industry or a
combination with hardware;

12. a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
including cinematographic works and television productions;

13. a mere scheme or rule or method of performing mental act or method of playing game;

14. a presentation of information;

15. topography of integrated circuits;

16. an invention which in effect, is traditional knowledge or which is an aggregation or

duplication of known properties of traditionally known components or components.

Section 4

Prohibits the grant of patent in respect of an invention relating to atomic energy falling within
Subsection (1) of Section 20 of the Atomic Energy Act, 1962. Under Section 20 of the Atomic
Energy Act, 1962 “no patents shall be granted for inventions which in the opinion of the Central
Government are useful for or relate to the production, control, use or disposal of atomic energy
or the prospecting, mining, extraction, production, physical and chemical treatment,
fabrication, enrichment, canning or use of any prescribed substance or radioactive substance or
the ensuring of safety in atomic energy operations”.