This article is written by Monika Verma.
When we talk about Patent laws, which are territorial, that is they are specific for countries where they are enacted.
In India out of 962 patents application published in 2019, 71 applications were early publication and 891 were ordinary publication but only 309 applications have been granted this week, rest were rejected.
According to the Patent Act (of India), those that fall under the category of “Inventions” can be patented, as defined in Section 2 (j) of the Act which involves anything that is novel, capable of industrial application, and is not frivolous (subject-matters eligible for patentability). However, those that cannot satisfy such conditions (or restricts the scope of subject matters eligible for patentability) are non-patentable as mentioned in Section 3 and Section 4 of the Act.
What Are Inventions?
As defined in Section 2 (j) the term “invention means a new product or process involving an inventive step and capable of application”. The invention should be of absolute novelty as neither it has been used nor published in any part of the world.
Section 3 And 4 Of The Indian Patent Act
Section 3 and Section 4 of the Patent Act is highly debatable and deals with the list of exclusions that are non-patentable that do not satisfy the above conditions. Following are not the “inventions” under the meaning of this act:
(a) Inventions that are frivolous and contrary to natural laws.
Inventions which are frivolous or contrary to well established natural laws.
Example– Inventions that are against the natural laws that are any machine giving 100% efficiency, or any machine giving output without an input cannot be considered as obvious and cannot be patented.
b) Inventions which go against public morality
Inventions in which the primary or intended use or commercial exploitation of which could be contrary to public order or morality (that is against the accepted norms of the society and is punishable as a crime) or which causes serious prejudice to human, animal or plant life or health or to the environment.
Example– As in Biotechnology, termination of the germination of a seed by inserting a gene sequence that could lead to the disappearance of butterflies, any invention leading to theft or burglary, counterfeiting of currency notes, or bioterrorism.
(c) Inventions that are a mere discovery of something that already exists in nature.
The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living or non-living substances occurring in nature.
Explanation– Mere discovery of something that is already existing freely in nature is a discovery and not an invention and hence cannot be patented unless it is used in the process of manufacturing an article or substance. For instance, the mere discovery of a micro-organism is not patentable.
Landmark Cases of Non-patentable Inventions
In Bilski V. Kappos,
This case deals with the Patentability of a business method. In this case, Bilski and Warsaw applied for the patent on hedging risks on commodities trading but their patent got rejected by the US Supreme Court on grounds that an abstract idea cannot be patented.
(d) The mere discovery of a form already existing in nature does not lead to enhancement of efficacy.
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 new property or 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: For the purposes of this clause, 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 Glochem Industries Ltd vs Cadila Healthcare Ltd14,
The Bombay High Court held that “Section 3 (d) consists of all fields including the field of pharmacology. Further, in this case, the court held that “the test to decide whether the discovery is an invention or not? It is on the patent applicant to show that the discovery has resulted in enhancement of known therapeutic efficacy of the original substance and if the discovery is nothing other than the derivative of a known substance, then, it must be shown that the properties in derivatives are significantly different in terms of efficacy. So under this sub-section, the very discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance will not be treated as an invention.
In Ten Xc Wireless Inc & Anr vs Mobi Antenna Technologies,
The Delhi High Court held that “a method of replacing conventional antennae with split-sector antennae; a split-sector asymmetric antenna for replacing conventional antennae – are all mere uses for the asymmetric antenna already known. Under Section 3(d) the subject matter claimed is therefore not an invention.
In Novartis Ag v. Union of India15,
The Supreme Court of India said that “mere discovery of an existing substance would not amount to the invention”. The Supreme Court of India further, in this case, 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”.
(e) Mere admixing of mixtures leading in the aggregation of properties are non- patentable.
A substance obtained by a mere admixing of two or more mixtures resulting only in the aggregation of the properties of the components thereof or a process for producing such substance is not considered the invention.
Explanation- mere addition of mixtures is non-patentable unless this satisfies the requirement of synergistic effect i.e., interaction of two or more substances or agents to produce a combined effect greater than the separate effect.
(f) Mere aggregation or duplication of devices working in a known way is not an invention.
The mere aggregation or re-arrangement or duplication of known devices each functioning independently of one another in a known way.
Explanation- mere improvement on something or combinations of different matters known before cannot be patentable unless this produces a new result or article.
(h) Horticulture or agricultural method is non-patentable.
A method related to agriculture or horticulture.
Explanation- a method of producing plants like cultivation of algae and mushrooms or improving the soil is not an invention and cannot be patentable.
(i) Medicinal, curative, prophylactic, diagnostic, therapeutic for treating diseases in human and animals are non-patentable.
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.
Explanation– those medicinal methods administering medicines orally or injecting it, surgical methods like stitch free surgeries, curative methods as curing plaques etc does not fall under the ambit of the invention and are non- patentable.
In Mayo Collaborative Services V. Prometheus Laboratories, Inc20.
In this case, the US Supreme Court said that “diagnostic and therapeutic methods (which includes the treatment or cure of diseases) is not patentable as it claims a law of nature”.
(j) Essential biological processes for the production or propagation of animals and plants is not an invention.
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.
(k) Simple mathematical or business or computer programs are not an invention.
A mathematical or business method or a computer program per se or algorithms;
Explanation– any mathematical calculation, any scientific truth or act of mental skills any activities related to business methods or algorithms (which are like the law of nature) cannot be patented.
(l) Aesthetic creation is not an invention.
A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions.
Explanation– such activities like writings, painting, sculpting, choreographing, cinematographing all these which are related to creativity cannot be patented and fall under the gamut of Copyright Act, 1957.
(m) Mental act, rule or method is not an invention.
A mere scheme or rule or method of performing mental act or method of playing a game.
Explanation- playing a game such as chess, sudoku etc are not considered as inventions rather these are mere brain exercises and hence are not patented.
(n) Presentation of information is non-patentable.
Explanation- a mere presentation of information by tables, chars is not an invention and hence are not patentable, for example, railway timetables, calendars etc.
(o) The topography of integrated circuits is non-patentable
Such as semiconductors used in microchips are not patented.
(p) Traditional Knowledge is not an invention.
An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of the traditionally known component or components.
Explanation- the traditional knowledge is know-how, skills, that is passed from generations to generations of a community and is already known cannot be patented for example the antiseptic properties of turmeric.
(q) Atomic-Energy inventions are non -patentable.
Section 4 deals with inventions relating to atomic energy, that are also not patentable and that fall within sub-section (1) of section 20 of the Atomic Energy Act, 1962.
Will NCPI (Bhim) Qualify For Patents?
Unified Payments is a payments mechanism that allows bank customers to send and receive money via a smartphone in real time. These payments settlements technology has been developed by NPCI (National Payments Corporation of India) which is a Reserve Bank of India backed entity with support from Indian banks.
NPCI indicated that the proximity-based solution offered by Tone Tag(a Bangalore based tech startup) could employ a tone, a sound, a near field communication (NFC), a radio-frequency identification device (RFID) or deploy ultra-high frequency (UHF) technology or a combination of these relying upon algorithm encryption. The request for proposal of NCPI added a clause that raises questions about whether NPCI’s RFP violates Section 3(k) of the Act, as amended in 2002, lists ‘a mathematical or business method or a computer programme per se or algorithms’ under ‘inventions not patentable.
Patentability Of Artificial Intelligence
The AI applications are modern-day machine learning functions and are of significant importance, especially in the commercial AI sector. However, the question is, should AI be patentable?
Indian Patent System for AI-based inventions.
In India for patenting an AI technology one needs to follow the Computer-related Inventions (CRIs) guidelines which exclude a computer programme or algorithms from being patented (under 3(k) of the Indian Patent Act). At present these guidelines are focused on computers/algorithm/software based inventions and also are used to examine AI based inventions.
To claim for patenting the inventions based on AI following are needed:
- Describe hardware (eg computer system, server, sensors etc.) along with AI algorithms in your patent;
- Claim working method/process of the invention which uses AI; and
- Refrain from focussing directly on programming codes/algorithms of AI.
The word “Artificial Intelligence” can be seen in claims of the granted patents but it is to be noted that this word is used to represent part of a system that utilizes data/commands provided by AI system. However, no focus is made on the operating principle of AI.
India is a country that has understood the importance of strong patent systems for the growth of industry and commerce to bring it at par with the modern world. With the promulgation of the Indian patent act, there is an increase in the number of patent filing. Section 3 and 4 of this act (consisting of inventions that cannot be patented) has been a filter that decides what falls in the ambit of inventions. Only inventions that are new and useful are patented. Innovators and inventors are highly intrigued in protecting their intellectual property.