This article was written by Monika Verma and further updated by Jaanvi Jolly. This article delves into the concept of ‘invention’ in the context of patent law, including its definition and the criteria for patentability along with relevant case laws. It also covers what constitutes non patentable subject matter and provides a brief overview of international perspectives on the subject matter. It further explains the position in regard to patents in the pharmaceutical industry and the patentability of AI. 

Introduction

Patent law is a specialised field within the sphere of Intellectual property laws. Intellectual property originates from the human mind and creative intellect. Therefore, individuals who use their creative skills should be granted some form of benefit in the form of protection of their invention. This protection can be granted in the form of patents. A patent is an exclusive right granted for an invention.

When it comes to patents, not all inventions are eligible for protection. Understanding what can and cannot be patented is crucial for inventors and businesses alike.

Patentable inventions are those that meet specific criteria set by patent laws. Generally, for an invention to be patentable, it must be novel, non-obvious, and useful. Examples include new devices, methods, or compositions of matter that demonstrate a clear inventive step and offer a tangible benefit.

Non patentable inventions, on the other hand, fall outside the scope of patent protection. These often include abstract ideas, natural phenomena, and laws of nature. Inventions that are deemed to lack novelty or are considered obvious in light of existing knowledge are also not patentable.

Understanding these distinctions is essential for navigating the patent system effectively and ensuring that intellectual property is properly protected. These grounds for patentability may vary from country to country as these are governed by territorial laws, this aspect has been discussed in the next segment.

Territorial application of patent laws

When we talk about Patent laws, they are territorial, that is they are governed by the specific laws of the country where they are registered. Intellectual property rights are governed by domestic laws, however, the countries that are a member of the World Trade Organization (WTO) need to frame their domestic laws in line with the Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS).  It is pertinent to mention here that the World Trade Organisation or WTO is an organisation that plays a pivotal role in the global trade landscape, overseeing and facilitating international trade agreements and resolving disputes among member countries. The TRIPS Agreement is a key international treaty administered by the World Trade Organization, aimed at setting comprehensive standards for the protection and enforcement of intellectual property (IP) rights globally. 

Article 7 of the TRIPS Agreement sets out the goal to be achieved by intellectual property rights.

1. It seeks to promote technological innovation. 
2. It seeks to transfer and disseminate technology to the mutual advantage of producers and users of technology knowledge. This transfer is intended to be in a manner which is in favour of social and economic welfare and balances the rights and obligations of the parties involved. 

Despite the formulation of a broad patent framework established by the TRIPS Agreement, we might find some country specific distinctions on the grounds of patentability and non patentability. 

In this article the aspect of patentable and non patentable inventions is discussed in the context of India and the Patent Act 1970 (hereinafter referred to as the Act 1970). 

The Act, 1970 was a direct result of the suggestions of the two committees, the Bakshi Tekchand Committee and the Justice Rajagopala Ayyangar Committee. The various recommendations of the committees included food and drug-related patents, compulsory licensing, and connected working requirements that focused on the socio-economic conditions of India specifically. The most notable advantage of patent law for the pharmaceutical industry was its provision of exclusive rights, which significantly supported innovation and investment in drug development, due to which Indian companies began exporting medicines globally.

To gather an understanding about patentable and non patentable inventions, we first need to understand what we mean by ‘patents’.

Meaning of Patents 

A patent is a type of intellectual property, which can be understood as an exclusive right that is granted by the government to the creator of a product or a process. The product or process must be novel in nature; a new technical solution to a problem.

As per WIPO (World Intellectual Property Organisation), “A patent is an exclusive right granted for an invention. Patents benefit inventors by providing them with legal protection of their inventions.”

As per the Cambridge Dictionary, a patent is “the official legal right to make or sell an invention for a particular number of years.”

In the case of Aphali Pharmaceuticals Ltd. vs. State of Maharashtra (1989), the Apex Court defined a patent as a grant of some privilege, property or authority, made by the government or sovereign of a country to one or more individuals.

A patent offers the benefit of protecting an invention by establishing it as a form of private property, giving the patent holder exclusive control over its use and commercialisation. The patent confers on the owner a legal right to stop others from copying or using their invention. The owner not only has the right to use the invention but also to prevent all others from using or commercially exploiting it. 

A patent essentially is the grant of an exclusive right to ownership, however, there are some additional benefits which are available to the patentee after the grant of a patent which are discussed next.

Rights and benefits of patent

Section 48 of the Act, 1970 provides the rights of the patentee that arise once the patent is granted. Some of these rights and benefits are given as follows:

1. In the case of either a product or process patent, the patentee gets an exclusive right to prevent any other person from using, making, commercially exploiting or importing the invention without the patentee’s consent.
2. The patentee or their company gets a competitive edge over their competition. Whenever they’re able to use the patent invention in the form of technology in their business, it would unquestionably improve their market power and provide them with a competitive advantage over the others, helping them make more profit. Further, whenever anyone else in the market uses their patented technology, they would get a royalty fee for the same.
3. A patent provides the patentee with protection in reference to his invention after he discloses his invention to the public. It enables him to go to an exhibition or a trade show and display his invention without fear of it being copied by others. This would either lead to diminishing or elimination of the competition and lead to increased sales.
4. A new source of revenue can be added by licensing or assigning a patent. So, when a business or an individual is able to seek a patent for their invention, they are also allowed to licence or assign their invention to others for a price. This in a way grants them the monopoly.
5. It also helps businesses or individuals to raise funds by attracting investors. Furthermore, the patents can also be bought and sold or licensed. They can also serve as collateral security for bank loans. 
6. A patent can also be used as a bargaining chip during licensing negotiations with the competitor. Under the concept of cross-licensing, the companies exchange the rights to licence a patent in return for another, this saves them from paying hefty royalty fees. This helps in negotiations and collaborations and decreases the capital that would have been needed to acquire new technology. 

The subject matter of a patent is an invention, therefore prior to understanding what inventions are patentable, we need to understand what constitutes an ‘invention’.

Inventions

Section 2(1)(j) of the Act, 1970 defines the term ‘invention’. The definition is very important to understand since it outlines the scope of what can and cannot be patented in India. As per this Section, an invention means a new product or process involving an inventive step and capable of industrial application. The invention should be of absolute novelty in the context that it has neither been used nor published in any part of the world.

Based on a bare reading of the aforesaid provision, the following ingredients are essential for the grant of a patent, which are explained below:

1. A new product or process: This aspect is also called the novelty aspect or criteria. In order for a product or process to seek a successful patent registration, it must be something new, not used or disclosed in public in any form in any part of the world.
2. Involving an inventive step: Section 2(1)(ja) of the Act, 1970 provides the definition for ‘inventive step’. It encompasses advancements in existing technical knowledge or has an economic significance, or both. Along with these aspects, it must also be a step which is not within the general ordinary knowledge of the person who is involved in the particular industry. This aspect is also called the non-obvious aspect. For a product or process to be patented, it must be something new and not within the knowledge of a person working in the field for which the patent is sought. The invention must be a result of the creativity of the inventor.
3. Capable of industrial application: Section 2(1)(ac) of the Act, 1970 defines the term ‘capable of industrial application’ as an invention capable of being made or used in an industry. This aspect is the practical utility aspect. For a product or process to be patented, it must have some practical utility and must not merely be a theory, incapable of application in practicality.

On the other hand, Section 2(1)(l) of the Act, 1970 defines the term ‘new invention’. It has two elements:

1. Any invention or technology which has not been anticipated or expected by a publication. In other words, the subject matter of the patent must not be available in the public domain or form a part of the state of the art.
2. Any invention or technology which has not been used before the filing of a patent application anywhere in the world.

Patentability and invention

Under the Patent Act, 1970, the concepts of invention and patentability have been differentiated, they deal with distinct aspects of an invention. Therefore, for the grant of a patent, it is essential that the invention fulfils the dual test of ‘invention and patentability’.

An innovation which may generally be considered an invention may not qualify as an invention as per the definition provided under the Act. Further, even if something satisfies the condition of being an invention as per the definition provided in the Act, it may be denied the grant of a patent for other considerations as stipulated under Section 3 of the Act, 1970 which introduces stipulations of two types. 

1. The first states that particular innovations shall not be deemed to be inventions under this Act. For example, the mere discovery of a new form of a known substance or any substance obtained by mere admixture results only in the aggregation of the properties. 
2. The second provides that, though the innovation satisfies the conditions to be an invention as per the act, despite that it may not be granted patent protection, for other reasons. For example, Section 3(b) of Section 3 bars the protection of an invention the use of which is contrary to public order or morality

After gaining an understanding about what constitutes an invention under the patent law, the question arises what all kinds of inventions can be protected by patents, this aspect of patentable subject matter is discussed next.

Patentable subject matter

In India, the legislature has not provided a fixed exhaustive list of inventions which can be granted a patent. Whenever a subject matter satisfies the three-fold criteria of patentability as provided in Section 2(1)(j), it becomes eligible to claim patent protection. However, the final registration is subject to the provisions of the territory’s governing law. In India, Section 3 and Section 4 of the Act, 1970 provide an exclusive list of non patentable subject matter. This makes all the other inventions patentable if they are novel and have an inventive step and industrial application.

Section 5 of the TRIPS Agreement contains provisions pertaining to patents and Article 27, specifically provides that patents can be granted for either the products or the processes of inventions in all the fields of technology. However, the inventions must be new, involve an inventive step and must be capable of industrial application. This was significant as it marked a departure from the original provision of the Act, 1970, which disallowed patents for the substances intended for use or capable of being used as food, medicines or drugs. For these, only the process patents were allowed.

The Act 1970 does not lay down a list of inventions which can be patented, however, Sections 2, 3 and 4 of the Act, 1970 explicitly deal with the inventions which cannot be granted a patent. 

The aspect of non patentable subject matter is discussed next, along with relevant case laws.

Non patentable subject matter under the Patent Act, 1970

Chapter 2 of the Act, 1970 deals with the inventions which are barred by the Act from being patentable. In other words, the inventions falling within the provisions of this chapter cannot be patented. 

Section 3 of the Patent Act 1970 

Section 3 of the Act, 1970 provides a list of subject matters which do not fall within the definition of an invention as per the Act and are thereby not eligible for patent protection.

The various provisions of Section 3 are discussed below in detail with relevant case laws to enhance the understanding of the section.

Frivolous inventions

Section 3(a) of the Act, 1970 bars the grant of a patent to inventions that are frivolous or that seek to claim an obvious thing or are contrary to natural laws. A frivolous invention is one which has no use or is not patentable because it goes against well-established laws or public morality.

For instance, a machine that claims to generate energy without any input would be frivolous as it contradicts the law of energy or a machine claiming to teleport people. A perpetual motion machine would not be patentable as it would defy the laws of thermodynamics.

Inventions contrary to public order or morality

Section 3(b) of the Act, 1970  bars the grant of patent to inventions whose primary or intended use or commercial exploitation may be contrary to public order or morality or cause serious prejudice to humans, animals or the environment. Any invention which causes harm to humans, animals, plants or the environment or is related to inventions which aid the instances of robbery counter, feeding of currency, notes, frauds, etc., can be considered as inventions against public order or morality. For instance, inventions that use human embryos for commercial purposes or inventions which modify the genetic identity of humans or animals or cause them suffering.

Mere discovery of principle or theory 

Section 3(c) of the Act, 1970 bars the registration of inventions that are a mere discovery of scientific principle or formulation of an abstract theory. The prime examples under this category include the principle of gravity or the laws of thermodynamics, Pythagoras’ Theorem, Einstein’s theory of relativity or Newton’s laws of motion. Inventions that can be patented must be technological in nature and intended to solve a technical problem.

Mere discovery of naturally occurring substances

Section 3(c) of the Act, 1970 bars the grant of patents to inventions which are mere discoveries of naturally occurring substances. Discovering something that naturally exists in nature is considered a discovery rather than an invention and thus cannot be protected by a patent on its own. For example, simply discovering a microorganism does not qualify for patent protection. However, if this discovery is used in a novel process to create a new article or substance, it might be eligible for patent protection.

This would include elements like sunrise, rainbows, tornadoes, erosion, and electromagnetic pulses. It would also include the discovery of a species of plants or animals. These elements are naturally occurring and have no relation to human intellect, thus, it is a mere discovery and cannot be claimed or patented as an invention.

Mere discovery of a new form 

Section 3(d) of the Act, 1970 bars the grant of a patent to the discovery of a new form of an already known substance that does not lead to enhancement of efficacy of the substance. The discovery of a new form of an already known substance is a mere discovery and not an invention and is thereby not patentable. For instance, discovering that paracetamol has analgesic properties or that ethyl alcohol can be used as fuel because of its anti-knocking properties are mere discoveries and not inventions.

In case it extends the already known application substantially or leads to a new use for the substance, then it can be considered for a patent.

Efficacy under this Section refers to the ability to produce a desired or intended result under Section 3(d) of the Act,1970. The test of efficacy would depend upon the function, utility or purpose of the product, which is under consideration. In the case of a medicine that claims to cure a disease, the test of efficacy would only be the therapeutic efficacy of the medicine, which is to be judged strictly under Section 3(d) along with the explanation, not all beneficial properties of a new former relevant, but only those properties which relate to it. Its efficacy is considered may change of form which changes to the properties inherent to that form by itself cannot be qualified as enhancement of efficacy of a known substance.

Therefore, the substance must represent a new form of an existing substance and must meet the criteria for invention as outlined in the Act. It also must satisfy the enhanced therapeutic efficacy test as provided under Section 3(d) explanation.

For the purposes of this Section, salts, esters, ethers, 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 are significantly different in terms of efficacy. The mere discovery of any new property or use of a known substance is not patented unless it is of greater efficiency than the original substance hence, the mere incremental innovation does not fall under the gamut of patenting.

In the case of Monsanto vs. Bowman (2013), patents in the field of agricultural biotechnology were discussed at length. The appellant Monsanto had a patent for a specific seed which was a genetically modified variety to provide resistance against a specific herbicide. The appellant only sold the seeds subject to a licensing agreement whereby the farmers are only allowed to sell the crop but not replant it. 

The respondent farmer used the seed for one season and for the next plantation used some other less expensive soybean seeds. As the cheaper seeds were harvested largely from fields planted with the roundup-ready soybean, many of the cheaper seeds had the roundup-ready trait. The respondent subsequently applied the herbicide to the fields to identify which plants contained the roundup-ready trait and save their seeds for replanting the next season. This practice was discovered by the appellant and a suit was filed for infringement. 

The respondent raised the defence of “patent exhaustion,” which gives the purchaser of a patented article, and any subsequent owner, the right to use or resell the article but does not permit the purchaser to make new copies of the patented product. The Supreme Court of America rejected the defence and held that patent exhaustion did not protect Bowman because he had “created a newly infringing article.” A farmer who buys patented seeds may not reproduce them through planting and harvesting without the patent holder’s permission. 

If we see the application of this decision in India, the decision would be very different. India is a signatory to the TRIPS agreement and thereby had to bring its domestic patent law in line with the international standards. However, as far as plant varieties are concerned Article 27.3 of the Agreements provides that a member state can either make it a patentable subject matter or protect it under a ‘sui generis’ (of its own kind) system. India has opted for a sui generis system and has enacted the Protection of Plant Varieties and Farmers Rights Act, 2001, keeping in mind the economic and social situations of the country. So Indian law provides two important flexibilities:

1. Seeds and plant varieties are not patentable in India.
2. Section 39 of the PPVF Act, 2001 provides for “Farmer’s Rights” and allows the farmers to re-sow the seeds.

      Note: This legislation has been discussed later in the article.

In the case of Novartis AG vs. Union of India (2013), the appellant claimed that their product had an ‘Imatinib Mesylate’ free base, which was a well-known substance. The product was created from a solution of Imatinib Mesylate and from that solution crystalline forms of alpha and beta of the chemical were derived. 

Thereby, they claimed that there is not one-step single form but rather successive dual steps from a known substance and Section 3(d) applies only to a single-step discovery. It was also further claimed that the term in Section 3(d) contemplates a trifling change of form and the invention of beta crystalline form was not a major change of form.

The Supreme Court relied on the case of Monsanto vs. Bowman, 2013, wherein the following points were stated:

1. Once the notion of what is known is fixed, it becomes obvious that efficacy in the context of drugs must mean therapeutic efficacy.
2. The reason for the enactment of Section 3D was concerns relating to the protection of agriculture and the protection of pharmaceuticals that are evergreening of patents
3. It is not possible to give an exhaustive definition of what constitutes therapeutic efficacy and has to be seen as per the facts and circumstances as to whether the advance in knowledge leads to enhanced therapeutic efficacy
4. The explanation is a good statutory guide, which states that a changed form of the same molecule is not considered as passing the test of Section 3(d) of the Act, 1970. It is possible that changed forms of organic molecules may have fallout such as making it more soluble or thermodynamically stable, and such changes may improve the bioavailability of the element. However, none of these features impact the therapeutic efficacy of the original invention.
5. Further, the efficacy of the non-substance must stand enhanced to be saved from disqualification under Section 3(d) and it must be that non-substance, the new form of which has been discovered.

Therefore, the Apex Court concluded that the appeal must be dismissed since the beta form of Imatinib Mesylate is neither a new substance as it is both anticipated and obvious nor it is a new form of a substance which exhibits significantly enhanced efficacy. Finally, it was held that for pharmaceutical patents apart from tests of novelty, inventive step and application, there is a new test of enhanced therapeutic efficacy for claims that cover incremental changes to existing drugs which also Novartis’s drug did not qualify.

In the case of Glochem Industries Ltd vs. Cadila Healthcare Ltd (2009), the issue discussed was related to the infringement of a patent and the standard for the grant of a patent. The appellant, Glochem Industries, had a patent in respect of a pharmaceutical product. The patent in question was a specific formulation of a drug. 

The respondent was accused of infringement of the aforesaid patent. The question to be decided was whether the respondent’s formulation was sufficiently similar to constitute infringement. The respondent in his defence challenged the patentability of the patent of the appellant.

The Bombay High Court examined the patent on the grounds of novelty, inventive step and industrial application, in order to decode the validity of the patent of the appellant and whether the product of the respondent fell within the scope of the patent.

The concept of the ‘doctrine of equivalents’ was discussed in the case. Literal infringement may be found if an accused device or method falls entirely within the scope of the asserted claims once properly construed but there is no literal infringement if any claim limitation is absent from the accused device or method.

When literal infringement does not exist, infringement, in certain limited circumstances, may nevertheless be found under a judicially created doctrine called the “doctrine of equivalents.”

Under the doctrine, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the patented invention.

The doctrine of equivalents arises in the context of an infringement action. If an accused product or process does not literally infringe a patented invention, the accused product or process may be found to infringe under the doctrine of equivalents. The essential objective behind an inquiry is, whether the accused product or process contains elements identical or equivalent to each claimed element of the patented invention.

In determining equivalence, an analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute plays a role substantially different from the claimed element.

The Supreme Court found that Cadila’s product did not infringe upon Glochem’s patent either literally or by equivalence. It was concluded that the formulation by Cadila was different enough from Glochem’s patented formulation, thus, not constituting infringement.

Mere admixture

Section 3(e) of the Act, 1970 declares that the mere discovery of a substance by mere admixing of components only leading to the aggregation of properties is non patentable. The mere act of combining mixtures is not patentable unless it meets the criteria of a synergistic effect. A synergistic effect means that the interaction of two or more substances produces a combined effect greater than the sum of the individual effects.

Mere rearrangement

Section 3(f) of the Act, 1970 states that a discovery caused due to mere arrangement or rearrangement or duplication of devices working in a known way independent of each other is not an invention. The simple improvement on something or combining previously known elements is not patentable unless it results in an outcome which is new or creates a novel article.

Methods related to agriculture or horticulture

Section 3(h) of the Act, 1970 discusses this ground. The discovery of methods related to agriculture and horticulture faces specific restrictions when it comes to patentability. The main cause for the bar on their patentability is that they are often considered extensions of the “abstract ideas” or “natural phenomena” categories, which are not patentable. Patent systems typically aim to encourage technological advancements that involve new and inventive steps, rather than discoveries of natural laws or basic principles.

However, there are some inventions related to agriculture which may be patentable:

• Biotechnological advances

Innovations such as Genetically Modified Organisms (GMOs) or new strains of plants that involve genetic engineering or biotechnological methods may be patentable if they meet the criteria of novelty, inventive step, and industrial applicability.

• Agricultural machinery and equipment

Inventions related to new agricultural machinery or equipment that improve efficiency or functionality can be patentable, provided they involve technical innovation.

• Novel formulations and compositions

Methods involving new chemical formulations or compositions used in agriculture (such as fertilisers, pesticides, or herbicides) might be patentable if they provide a novel and non-obvious solution to a technical problem.

In the case of Decco Worldwide Post Harvest holding vs. Controller of Patents and Designs, (2023), the High Court of Calcutta discussed the differentiation of subject matter under Section 3(h) and Section 3(i) of the Act, 1970. 

The question of grant of patent was regarding an invention of fungicidal treatment for Black Sigatoka, which is a treatment for a leaf spot disease in banana plants that is caused by a specific fungus. It was claimed that the invention was a cost-effective and environment-friendly method which reduces the risk of resistance and improves the health and yield of the plant, increasing its economic value. The Controller of Patent rejected the application by stating that the invention was a method of agriculture. Whereas the appellant claims that it is a process of treatment of plants to render them free from disease. 

The court held that Sections 3(h) and 3(i) of the Act, 1970 cover different categories of invention where Section 3(h) is a method of agriculture in horticulture. It does not contemplate the treatment of plants to run them free of diseases. Whereas, Section 3(i) deals with the process of treatment and prevention. The court further held that by the 2002 amendment, the term ‘or plants’ was removed from Section 3(i).

Section 3(i) originally under the Patents Act, 1970 stated that “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 or plants to render them free of disease or to increase their economic value or that of their products.”

After the amendment of 2002, it was changed to, “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.”

As a result, the scope of Section 3(i) of the Act, 1970  has been reduced further. No reasons have been given by the Controller as to why the invention falls within the category of agriculture would fall under Section 3(h). It is evident from Section 3(i) of the act that the treatment of plants would not fall within the purview of non-patentability. The court set aside the order of the controller and sent it back for reconsideration on the law clarified by the court.

Inventions relating to the treatment of humans and animals

Section 3(i) of the Act, 1970 states that the discovery of a medicinal, curative, prophylactic, diagnostic, therapeutic process for treating diseases in humans or animals is not patentable. The treatment process if patented would prevent doctors from providing the best care for patients. The patents would restrict medical practitioners at the point of care. In the case of treatment for animals which aim at enhancing their health, or increasing their economic value or that of their products are also not patentable. This includes methods such as oral or injectable medication, stitch-free surgeries, and treatments for conditions like plaques, which do not qualify as inventions.

Animals and plants as inventions

Section 3(j) of the Act, 1970 bars the grant of a patent for plants or seeds including biological processes for their propagation, animals and the biological processes for their production or prolongation except for microorganisms. Something naturally found in the environment cannot be granted a patent. One simply cannot just discover a new plant and get patent protection.

It is also not possible to hold patents on plant varieties or products in India. The Act,, 1970 makes it clear that plants in whole or part, including seeds, varieties and species and essentially biological processes for the production or propagation of plants are not patentable inventions. 

The government of India enacted the Protection of Plant Varieties and Farmers’ Rights Act, 2001 (PPVFR) adopting a ‘sui generis’ (of its own kind) system. Indian legislation is not only in conformity with the International Convention for the Protection of New Varieties of Plants, 1978 but also has sufficient provisions to protect the interests of public sector breeding institutions and farmers. The legislation recognises the contributions of both commercial plant breeders and farmers in plant breeding activity and implements the provisions of TRIPs in a way that supports the specific socio-economic interests of all the stakeholders including private and public sectors and research institutions, as well as resource-constrained farmers.

According to the PPVFR Act 2001, “A farmer’s entitled to save, use, sow, exchange, share or sell his farm produce including seed of a variety protected under this Act in the same manner as he was entitled before the coming into force of this Act: Provided that the farmer shall not be entitled to sell branded seed of a variety protected under this Act.” It is considered to be the first Act in the world to consider both farmers’ and breeders’ rights.

However, under the Act, registration of new plant varieties is allowed. Section 15 of the Act lays down that the new variety must be novel, distinct, uniform and stable.

• Novel: The harvested produce of such new variety must not have been sold or disposed of with the consent of the breeder or their successor in India prior to a year and outside of India prior to four years generally but in the case of trees and vines prior to six years.
• Distinct: There must be at least one essential characteristic that makes the new variety clearly distinguishable from a variety that is a matter of common knowledge in any country.
• Uniform: The essential characteristics of the new variety must remain adequately uniform subject to any variation that can be expected from the particular features of its propagation.
• Stable: Even after repeated propagation of the variety, its essential characteristics should remain the same.

Mathematical, business methods or computer programs

Section 3(k) of the Act, 1970 discusses this ground. As per the act, any mathematical calculation or a scientific truth or an act, mental skills or activities related to business, methods, or algorithms are ineligible for patent protection.

In the case of Raytheon Company vs. Controller General of Patents (2023), the Delhi High Court discussed the question related to an invention related to scheduling in a high-performance computing set-up including all sorts of hardware devices that are found in computer systems and networks. 

The court stated that Section 3(k) prescribed painting of matters which fall under the categories mentioned in the section and in this case, the invention does not relate to a mathematical business method or algorithm. However, whether it pertains to a category of computer program per se has to be analysed. 

As per the 2017 guidelines in reference to computer programs test indicators were published for the identification of computer-related inventions. The guidelines discuss various provisions relating to the patentability of computer-related inventions. The procedure to be adopted by the Patent Office while examining such applications and the jurisprudence that has evolved in this field has also been discussed.

In order to obtain a patent for a software innovation, the innovation must be presented in a way that the innovation which is sought to be protected includes subject matter that is “not just a computer program”. Therefore, a patent can be acquired for a software invention in India provided the software invention is patentable in conjunction with the hardware. This would indeed provide ample incentive for the inventors.

The use of the words ‘per se’ under Section 3(k), of the Act, 1970 states that the change has been proposed as sometimes the computer program includes certain other things which are ancillary or develop their own and the intention of the legislature is not to reject them from grant of a patent of their inventions, however, the computer programs as such are not intended to be granted patent. 

The court also recognised that in innovation-driven economies, where most inventions are based on computer programs, it would be unfair to argue that all such inventions are not patentable. The innovation in the fields of artificial intelligence, blockchain technologies, et cetera are based on computer programs and to claim that they would not be patentable simply for that reason is arbitrary it is rare to see a product which is not based on a computer program, cars or other automobiles, micro washing machines, et cetera. All have some sort of computer program built. Therefore the effect that such programs produce, including in the digital and electronic products is crucial to determine the test of patentability.

The word for say was incorporated so as to ensure that genuine inventions which are developed based on computer programs are not refused patents. The court at last directed the Controller General to examine the applications in reference to the decision of the court.

Patentability of UPI framework 

The Unified Payment Interface or UPI can be understood in terms of two aspects. The first is the method itself as a concept or system and the second is the specific innovation or unique technical implementation related to the UPI. While the first one is generally not patentable, the latter can be patented.

The UPI method as an idea is built on the concept of transferring money electronically. This is only an abstract idea or a fundamental economic practice and thereby not patentable. Further, the UPI is also a publicly available standard developed by the National Payment Corporation of India (NPCI). It is widely used and is accessible to people at large, therefore the essential requirements of the grant of a patent that is newness and non-obvious innovation are missing.

However, if a person has made a unique, novel technological innovation or algorithms within the UPI framework which are not found in the standard formulation, that is patentable. For example, a novel method for improving transaction security or a unique algorithm for handling payment requests might be patentable if they meet the criteria of novelty, non-obviousness, and usefulness. 

In case of specific technical improvements which improve its performance or security. Further, in case some software innovations are made by the person which increases its functionality, in terms of managing transaction data or improving user experience. Those innovations can be patentable.

To conclude, the UPI payment system as a whole is not patentable. However, specific, novel and technical innovations could potentially be patentable.

Copyrightable subject matter

Section 3(l) of the Act, 1970 discusses this ground. As per this, literary, dramatic, musical or artistic work including cinematographic and television production including any other Aesthetic creation is not an invention. Activities like writing, painting, musical compositions or cinematographic productions are not patentable. However, some of these, if they fulfil the conditions, can be protected through the Copyright Act, 1957.

Mental act or method of playing a game

Section 3(m) of the Act, 1970 declares that an innovation which is merely a scheme or rule or method of performing a mental act or method of playing a game is not an invention and thereby cannot be granted a patent. The strategies for playing games such as chess or sudoku are mental exercises rather than technological interventions, and as such, they are not eligible for patent protection.

Presentation of information

Section 3(n) of the Act, 1970 discusses this ground. It states that methods of presenting information, such as in the form of tables, charts, pie charts, or graphs, are not considered inventions and are therefore not patentable. This provision is designed to ensure that fundamental methods of organising or displaying data do not receive patent protection, as they are generally considered to be tools for communication rather than technological innovations. A table used to display data on annual sales figures for a company, a bar chart illustrating the population growth of various cities over time, and a line graph depicting the trends in stock market prices over several years are a few examples.

Topography of integrated circuits

Section 3(o) of the Act, 1970 discusses this ground. It bars the registration of an innovation which merely deals with the topography of integrated circuits.

Traditional knowledge 

Section 3(p) of the Act, 1970 declares that an innovation which is merely the traditional Knowledge or duplication of known properties of traditionally known components is not an invention under the Act and thereby cannot be granted a patent. The traditional knowledge or skills are the knowledge and skills which are passed down to the generations in a community. These are already well-known and do not have an element of innovation or novelty. Therefore, these cannot be patented. For instance, the antiseptic properties of turmeric, antiseptic properties of need, etc.

Section 4 of the Patent Act 1970

Section 4 deals with inventions relating to atomic energy that are also not patentable and that fall within Section 20(1) of the Atomic Energy Act, 1962.

Section 65 of the Act, 1970 empowers the central government to direct the Controller of Patents to revoke a patent. Such powers can be exercised when the central government is satisfied that the patent has been granted for an invention related to atomic energy which is not as per Section 20 of the Atomic Energy Act, 1962. The Controller General needs to give a notice to the patentee, and after giving him an opportunity to be heard, can revoke the patent.

The question of granting of patent in the area of the pharmaceutical industry is often shrouded in controversy, therefore in the next segment, we will be looking at the development of the Indian position on the subject.

Patentability of product patents in pharmaceutical industries

At the time of independence of India, the Indian patent law was governed by the Patents and Designs Act, 1911 which provided for both product patents and process patents. However, it was later recognised by the government that the patent law presented had benefited foreigners more than Indians. it did not promote scientific research and industrialisation within the country and rather curbed innovation and inventiveness. 

As a result, the patent law was reviewed by the Tekchand Committee and the Ayyangar Committee. The latter stated that patents for chemical substances and inventions relating to food and medicine Should only be granted, process, patent, and product patents must not be allowed. 

Subsequently, the 1970 Patents Act was enacted on the recommendation of the committees, which replaced the Patents and Designs Act, 1911. Section 5 of the Act, 1970 excluded product patents for the substances which were intended for or capable of being used in food or medicine or drugs. This led to a transformational impact on the pharmaceutical industry of India. There was an increase in the production of drugs and formulations and India became an exporter of low-priced generic drugs to the world.

Thereafter, the Uruguay round of negotiations under the General Agreement on Tariff and Trade (GATT) was conducted. This resulted in the formation of WTO and the subsequent formulation of the TRIPS Agreement in 1995. The TRIPS Agreement was a comprehensive multilateral agreement which set the minimum standards for the protection and enforcement of intellectual property rights and aimed to harmonise the IP laws globally. 

India is also bound by the obligations under the TRIPS Agreement since we are a member of the WTO. As per the TRIPS agreement, India was required to allow the grant of product patents in the field of pharmaceutical and agricultural chemical substances, which was earlier barred under Section 5 of the 1970 Act. 

As a result, the government of India brought in The Patents (Amendment) Ordinance in 1994, which provided for allowing a claim for patent of an invention for a substance itself, intended for use or capable of being used as a medicine or drug and for the grant of exclusive marketing rights with respect to the product that is the subject matter of such a patent claim. 

In 1999, the Patent Act, 1970 was amended and brought in line with the ordinance. In 2004, the government brought in the Patents Amendment Ordinance by which Section 5 of the Act, 1970 was omitted which opened the doors for the grant of patents to pharmaceutical products along with other inventions. 

The Ordinance had to be replaced by legislation when the legislation was discussed in the Parliament. A few concerns were raised such as the patent production in the pharmaceutical and agriculture fields. Chemical products would have the effect of putting life-saving medicines beyond the reach of certain people. 

Therefore, the legislation had to strike a balance between its duty towards the people of the country as well as its obligation under the treaty. To balance the fears of the people, the Parliament amended Section 3(d) of the 1970 Act, which was intended to take care of any abuse of product patents in the medicine and agriculture, chemical substances industries.

A new product in the chemicals and pharmaceutical industry may not necessarily mean something which is absolutely new or completely unfamiliar or did not exist before. It can be something which is different from the previous product or a product which is better than what existed before or a product, which is in addition to another of the same kind. 

Thus, in the case of chemicals and pharmaceuticals, if the product to which the patent product protection is applied is a new form of an already known substance with non-efficacy, then the product in order to be granted, a patent has to pass the test of the invention as provided under Section 21(j) and (ja), the test of enhanced efficacy as provided in section 3D read with the explanation.

Section 3(d) of the Act represents the concept of patentability, which is different from the term invention. 

The area of Artificial Intelligence has been expanding day in and day out in the recent past, it has essentially become a part of our daily lives. From the use of virtual assistants like Siri to the use of software like Chatgpt, we can slowly witness the integration of AI in our lives. Therefore, it becomes pertinent to discuss the patentability of the inventions linked to AI.

Patentability of Artificial Intelligence (AI)

AI-related patents could cover various aspects of AI technology. These are:

1. Algorithms and methods: AI-related patents would include specific algorithms used for machine learning, neural networks, or data processing.
2. Applications: AI-related patents would include practical uses of AI, such as image recognition, natural language processing, or recommendation systems.
3. Systems and architecture: AI-related patents would include hardware or software configurations that implement AI technology, including specialised processors or frameworks.
4. Processes and technical know-how: Novel methods for training AI models or optimising their performance.

The patentability of AI can be seen in three perspectives:

Patenting of AI systems

In the United States of America or the European Union, AI systems can be patented if they meet the three requirements of patentability. These requirements are novelty or newness of the invention, inventive step or the requirement of non-obviousness and industrial applicability of the invention. However, AI Algorithms or abstract ideas related to AI are not patentable. Rather the specific application or implementation of those algorithms may be patented. 

Patentability of AI algorithms

A purely mathematical algorithm or an abstract theory or idea about AI is not patentable. However, if the algorithm is practically applied then it may be. An example of this would be an AI-based method for diagnosing medical conditions or optimising manufacturing processes that could be patented if it demonstrates a novel and non-obvious technological advance.

AI as an inventor

The position is still not very clear as to whether AI systems can be mentioned as inventors in patent applications. Globally, the current position seems to accept only humans as inventors. However, looking at the rapid speed of technological advancement, it might actually become a reality in the future.

Case laws related to patentable and non patentable inventions

Patentable inventions

BlackBerry Limited vs. controller of patents and designs (2024) Delhi High Court

Facts: In this case, the patent was sought for the feature of ‘automatic selection’ and ‘updating by a cache manager’. It was claimed as a novel technical advancement over “the feature of providing confidence level on the basis of likeability”, which was the prior art, over which “the characterising features of ‘automatic selection’ and updating by cache manager were novel technical advancements”. 

The patent application was refused by the controller of patents by stating that the elements are algorithm and computer programs per se and therefore fall within the bar of section 3 (k) of the Act, 1970.

It was claimed by the appellant that the technical feature which is the subject of the invention was an important feature that led Blackberry to issue promotional material, highlighting that more music could be downloaded on its devices, and if the feature claimed in the subject invention is enabled, more and more music or other content can be downloaded on the device. thereby it must be considered sufficient to cross the threshold of Section 3 (k) of the Act, 1970. Further, the technical effect is quite evident from the fact that it enables the user to get music through multiple sources which was not possible prior to this intervention.

Issue: Whether the subject matter is a computer program per se and thereby barred patent protection under Section 3 (k) of the Act, 1970?

Judgement: The court held that while there are some similarities between the subject patent and application and the prior art, the present patent application introduces several novel elements, which distinguish the two. While both of them involve the automatic selection of media files based on user preferences, the current patent subject uses “confidence level” based on likability offers a different metric compared to the popularity rating used in the prior art. 

Further, the current subject patent includes a specific step for categorising media file based on confidence levels and comparing file sizes to the available storage as a filter for selection which was not provided in the prior art. Additionally, the inclusion of a specific cache manager in the present patent application which is responsible for updating a list containing information corresponding to the selected media files is a novel feature not found in the prior art. 

Therefore, the court concluded that these distinguishing features including the technical step involving the cash manager, specific categorisation, and filtering process provide for a technical advance beyond the disclosure in prior art and therefore, the ground of non-patentability due to lack of novelty does not stand. 

Biotron Limited vs. controller general of patents and designs (2023) Calcutta High Court

Facts: In this case, the subject of the invention pertains to the novel composition of compounds, which were claimed to be effective in treating and preventing viral infections, especially against HIV, HCV and dengue virus. It was claimed that the compounds with cyclic substitutions are better than compounds with non-cyclic substitutes which existed prior to the appellant’s invention. Therefore, the subject invention is technically advanced compared to other known compounds.

The application was rejected by the controller general of patents and design on the ground that it lacked inventive steps under section 2(1)(j) and 2(1)(ja) of the Act, 1970 and further it was a non patentable subject matter under section 3(d) of the Act, 1970. 

Issue: Whether the subject matters lacks inventive step and also falls under the bar of section 3(d) of the Act, 1970?

Judgement: The Court held that the appellant had conducted a comparative study with the prior art to disclose that the cyclic substitutions have better activity than the compounds with acyclic substitutions. The subject matter of the patent has an average bacterial score of the compounds against three viral antigens as compared to non-cyclic substitutions, which do not have any activity against the said antigens. 

The order by the controller of patents and design failed to consider this aspect, the court relied upon the case in Novartis AG vs. Union of India (2013) wherein it was stated that section 3(d) clearly sets up a second tier of qualifying standards for chemical substances to leave the door open for true and genuine inventions, but at the same time to check any attempt at repetitive patenting. Section 3(d) does not bar patent protection for all incremental inventions of chemicals and pharmaceutical substances. 

In conclusion, the court asked the patent authorities to reconsider their order in light of the directions in the judgment.

Non patentable inventions

Bishwanath Prasad Radhey Shyam vs. Hindustan Metal Industries (1979) Supreme Court

Facts: The respondent Hindustan Metal Industries is a partnership firm which carried on business in manufacturing brass and German silver utensils. The appellant Bishwanath Prasad Radheshyam also had a business of manufacturing dishes and utensils. One of the partners of the respondent firm invented a device and method for the manufacture of utensils, which introduced improvement, convenience, speed, safety, and better finish to the goods produced. Subsequently, he got the alleged invention patented. Later, the respondent learnt that the defendant was using and employing the device and method, which was the subject matter of the former patent and filed a suit for permanent injunction against the appellant. 

The appellant claimed that the method which was covered by the patent of the respondent that of a ‘lathe’ (headstock, adapter and tail stock) has been known and is openly and commonly used in the commercial world. Thereby, the invention was not a new manner of manufacture or improvement, nor did it involve any inventive step. Therefore, it must be revoked. 

Issue: Whether the subject matters consists of an inventive step so as to be eligible for the grant of patent?

Judgement: The court upheld the objection of the appellant, by stating that for an invention to be patentable, an improvement on something which is already known before must be more than a mere workshop improvement. It must independently satisfy the test of invention or an inventive step. To be an improvement it must produce a new result or a new article or a better or cheaper article than before. Therefore, the invention of the respondent would not qualify for the grant of a patent.

OpenTV INC vs. Controller of patents and designs, (2023) Delhi High Court

Facts: The appellant company is engaged in providing interactive television solutions. It filed an application for patenting of a “system and method to provide gift media” which is stated to be “a network architecture and a method implemented on the same to enable the exchange of interactive media content distribution of any type of digital or tangible media”.

The application was refused on the ground that the subject matter falls within section 3 (k) of the Act, 1970 and therefore is not patentable.

Issue: Whether the subject matters falls under the bar provided under Section 3 (k) of the Act, 1970?

Judgement: The court stated that the subject matter is “various known components and technologies are being adapted in a manner so as to enable giving of a gift without human intervention except at the beginning where the gift and recipient is chosen by the sender”. The same is described in the form of a network in different embodiment formats and for the purpose of transmitting different media formats as well. The grant of patent would in effect be a monopoly related to a method of giving a gift and since it is a business method, no patent can be granted. As per section 3 (k), the exclusion in respect of business methods is an absolute one.

Conclusion

We live in a world where economies are highly knowledge-driven. Where the governments attempt to promote innovation in their citizenry. We need creative and inventive ideas that either bring in a new concept or improve an existing one. If a business or individual develops such a product or process, they would ideally want to have a proprietary right or monopoly over the technology and preclude others from using it. 

It is indeed true that patents provide incentives for innovation but what cannot be ignored is that they also create temporary monopolies. The task of balancing the patent protection of the patentee with the public access to essential technologies is crucial to ensure that the benefit of technological advancement is shared by the society together.

A strong patent system supports the growth of a knowledge-based economy, where intellectual property and technological innovations are central to economic activity. The nations which have a strong system of patents are seen as leaders in the era of technology and innovation. This reputation enhances their global standing and influence in knowledge globalisation. 

The patent also encourages the flourishing of different sectors of the economy and contributes to economic diversification which in turn reduces the reliance on traditional industries. 

Frequently Asked Questions (FAQs)

What happens after the term of patent protection expires?

Justice Rajagopala Ayyangar Committee Report stated that the patent system was a kind of quid pro quo system. In this system, the inventor is granted the monopoly by the issuance of a patent for a fixed term of twenty years in exchange of disclosure of the invention to the public to be used freely after the patent term is over. The invention will enter the public domain once the protection period is over. This means that anyone will be free to make, use, sell, or import the invention without permission from the original patent holder. 

Having the invention enter the public domain will ultimately allow for greater competition and innovation in the market, as other companies and individuals will be able to build upon the invention or create new and improved products or processes. Second, once a patent has expired and entered the public domain, the patent holder may stop receiving patent-related royalty payments. In addition, any licensing agreements in place with others will automatically be erased.

What is the term of a patent once granted?

Section 53 of the Act, 1970 stipulates that the duration of a patent granted in India is 20 years, starting from the date on which the patent application was filed. This means that the exclusive rights granted by the patent are valid for a period of 20 years from the filing date, provided that the patent holder meets all necessary requirements, including timely payment of renewal fees and compliance with other statutory obligations. After this 20-year period, the patent rights expire, and the invention enters the public domain, allowing others to use, make, or sell the invention without needing permission from the original patent holder.

What does the evergreening of patents mean?

Evergreen in layman’s terms means something that would last a lifetime. In the patent law, it is a process by which the patentee can extend the life of their patents in order to maximise their profits. In this endeavour, the patentee files multiple patents to cover different parts or aspects of the same invention. Herein, multiple follow-up patents are filed to further the protection period of the invention from its twenty-year limit. This process can be performed for inventions in any field. However, it is the most prevalent in the field of pharmaceuticals.

The ultimate goal is to ensure that there are no loopholes which the competitor might use to bypass the original patent and create a competing product or service without infringing the patent protection.

Can a patent be revoked?

Section 64 of the Act, 1970 deals with the grounds for revocation of a patent. The following are a few of the grounds mentioned:

1. The patent was granted on the application of a person not entitled under the provisions of this Act to apply.
2. The patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims.
3. Complete specification is not new, having regard to what was publicly known or publicly used in India before the priority date of the claim.
4. The claims of the complete specification are obvious or do not involve any inventive step.
5. Any claim of the complete specification is not useful.
6. The patent was obtained on a false suggestion or representation.
7. Any claim of the complete specification is not patentable under this Act.

What is the doctrine of patent exhaustion?

The doctrine of patent exhaustion limits the rights of the patentee to control what others can do with an article embodying or containing an invention. As per the doctrine, the first or initial authorised sale of a patented item terminates all patent rights to that item. However, it only restricts the patentee’s right to the particular article sold and does not affect his right to prevent the buyer from making new copies of the patented invention.

References 

• https://www.wipo.int/patent-judicial-guide/en/full-guide/india 
• https://www.wipo.int/export/sites/www/sme/en/documents/pdf/ip_panorama_3_learning_points.pdf
• https://www.ipindia.gov.in/writereaddata/Portal/Images/pdf/Final_FREQUENTLY_ASKED_QUESTIONS_-PATENT.pdf
• https://www.wipo.int/wipo_magazine/en/2013/03/article_0007.html

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