PATENTS
Patent protects invention. Invention is the subject matter of Patent. S.2(j), (ja) defines
invention and inventive step respectively. S. 2(m) defines patent. Patent is given on invention.
It is granted so it does not come on its own.
Subject matter could be solely a product or a process or a combination of both.
REQUIREMENTS FOR GRANTING PATENT
● Non-obvious
● Novelty
● Utility – capable of industrial application
HOW PATENT IS HELPFUL
● Patent encourages disclosure
● Reduces knowledge gap
● Reduces the cost of legal things like licensing
● Alternative to trade secrecy
● Easier transit of invention
INVENTIONS
s.3 & s.4 talk about inventions which are not patentable
Methods of agriculture/ horticulture not patentabe entirely due to policy reasons.
In other inventions no substantive value is being added
In discovery, there is no novelty
PRINCIPLE OF NOVELTY
s.2(ja) – “technical advance as compared to the existing knowledge” – is novelty
New inventions – new to prior art – prior art is already in public domain, so patent is granted
on advancement of technology over that. To understand what is ‘new’ there is a base line and
that base line is the state of the art technology i.e. prior art.
Encourages inventor to disclose its invention sooner as other people may also be working on
the same invention, so sitting on the invention can lead other people getting patent for it.
So novelty helps in creating and improving base line; and sooner disclosure
NON-OBVIOUSNESS
The second requirement for granting patent under s. 2(ja) is that ‘the invention must not be
obvious to a person skilled in the art’ i.e. the ‘non-obviousness’ requirement.
Hence, the inventive step must not be an obvious step which the society would obtain
automatically without any extra effort. An ordinary person skilled in the art could provide
solution to the problem, so there is no need to reward for inventing such as others could also
find it in due course.
Ratio-
• Unjust in principle and injurious in consequence- if absent.
• Socially wasteful for us to pay for an invention which we are certain to receive for
free and in about the same amount of time – as a matter of course.
• Additional cost other artisans would be transferred to consumers with no such
invention that would otherwise would not have happened.
• Patent liability would be narrowed down to a copying-based standard with full
defense of independent creation (as in ©) from the current use-based standard with no
defense for independent creation.
Origin-
• Entered with Hotchkiss v. Greenwood, 52 U.S.248 (1851) “not patentable ..unless
marked by more ingenuity and skill …than were possessed by an ordinary mechanic
acquainted with the business.”
• Followed in Reckendorfer v. Faber, 92 U.S.347 (1875), “an instrument or
manufacture which is the result of mechanical skill merely is not patentable.” Facts
are given below:-
POSITA – person of ordinary skill in the art
Graham v. John Deere (PPT)
The two PPTs
PATENTABILITY OF PRODUCTS OF NATURE/
Trips
MICROORGANISMS
EVERGREENING OF PATENTS
Novartis case
Facts - - In 1997, Novartis, a Swiss based pharmaceutical giant filed an
application to grant patent to an anticancer drug Glivec which is used to treat
Chronic Myeloid Leukemia (CML) and Gastrointestinal Stromal Tumours
(GIST) on the basis that it invented the beta crystalline salt form (imatinib
mesylate) of the free base, imatinib..
Madras Patent Office refused the patent application of Novartis for its drug
Glivec stating that the said drug did not exhibit any major changes in
therapeutic effectiveness over its pre-existing form, which was already
patented outside India. The said decision was based on Section 3(d) of the
Indian Patents (Amendment) Act, 2005 which provides a known substance
can only be patented if its new forms exhibit “enhanced efficacy”. The Patent
Office did not find any enhanced efficacy in the drug Glivec and, therefore,
considered it incapable of patentable under Section 3(d) of 2005 Act.
In May 2006, Novartis filed two writ petitions under Article 226 of the Indian
Constitution before the High Court of Madras – one appealing against the
order of Madras Patent Office rejecting its patent request and the other
contesting that Section 3(d) of the Indian Patents Act is not in compliance
with TRIPS and is vague, arbitrary and violative of Article 14 of the
Constitution.
The Madras High Court refused the Writ Petitions of Novartis holding that it
did not have jurisdiction to determine whether a domestic law is in contrary
to international treaty, so it cannot decide whether Section 3(d) is in
compliance with TRIPS. As far as Section 3(d) is considered, the objective of
the Amending Act was to prevent evergreening and to make easy the access
to life-saving drugs to the citizens. Therefore, it cannot be considered to be
vague and arbitrary.
The new phase of litigation started in Intellectual Property Appellate Board,
which is an appellate body of patent controller. IPAB considered the
beta-crystalline form of imatinib mesylate as new and an inventive step but
refused to grant a patent to the drug of Novartis since it was hit by Section
3(d) of the Act. Novartis challenged the said order by filing Special Leave
Petition before the Supreme Court.
The main issues that came before the Supreme Court were-
1. Whether the invention is in consistent with Section 3(d) of the
patent act?
2. Interpretation of Section 3(d) of the patent act?
3. Whether the invention qualifies for the test of novelty and inventive
for the alleged product?
The Supreme Court adopted the following approach-
1. Court observed that the product was one of the new forms of the
substance and not the whole substance. It has always existed in the
original amorphous form. The product thus has to qualify the test
laid down in Section 3(d) of the Patent Act.
2. The Section clearly specifies that a new form of the substance in not
patentable under Indian law unless it enhances its “known efficacy”.
3. Novartis contended that the physico-chemical properties of the
polymorph form of the imatinib molecule, i.e. better flow properties,
better thermodynamic stability and lower hygroscopicity, resulted in
improved efficacy and hence is patentable under Indian law.
4. The Apex Court rejected this contention stating that in the case of
medicines, efficacy means “therapeutic efficacy” and these properties
while they may be beneficial to some patients do not meet this
standard. The Supreme Court also held that patent applicants must
prove the increase in therapeutic efficacy based on research data in
vivo in animals.
5. The Supreme Court held that the true intention to enact section 3(d)
was to prevent the concept of evergreening and thus if the invention
does not fulfil the test of Section 3(d), it cannot be granted a patent.
The court further specified that this case should not be interpreted to
mean that Section 3(d) bars all incremental inventions. It is with
regard to the field of medicine especially in cases of life-saving drugs,
a great acre and caution needs to be taken so as to protect the right to
life of the masses.
PATENTIBILITY OF BUSINESS METHODS
s.3
Yahoo vs. Rediff
(https://www.manupatrafast.com/NewsletterArchives/listing/RK%20Dewan/2012/Newsletter
%20October%202012.pdf) ;
https://spicyip.com/2012/01/yahoo-v-controller-and-rediff-business.html
The IPAB in this case deliberated as to the patentability of a ‘Business Method’ in India. The
IPAB held that the patent application filed by Overture Services Inc. (which was later taken
over by Yahoo Inc.) was not patentable under the provisions of Section 3 (k) of the Indian
Patents Act, 1970 which states as under: “Section 3 The following are not inventions within
the meaning of this Act,— (k) a mathematical or business method or a computer program per
se or algorithms;.” The invention relates to “A method of operating a computer network
search apparatus”. Rediff.com India Ltd. filed a pre-grant opposition and the Patent Office
found that the patent did not pass the novelty and patentability test. This order was appealed
against by Yahoo and the matter was heard by the IPAB. Rediff argued that the alleged
invention was merely a computer program which performs a business method causing a
search listing with given key words provided by a user based on the amount of money
deposited. The IPAB considered the question as to whether the Invention is patentable or not.
The IPAB considered Section 3(k). The IPAB observed that in contrast to the law prevalent in
the US, in India the law specifically excludes business method patents and there is no
administrative acceptance therefor. The IPAB relied on a passage in Mathew Fish in “Patent
Law: Interpretation and Scope of Protection” which stated “For inventing business methods
no incentive is required because better business methods are necessary ingredients of the art
of doing business and further the need for making more money is inexorable. Secondly the
exclusion of competition may really be counter-productive to the technological prosperity of
the society.” The IPAB held that since the invention falls under the purview of Section 3 (k) it
is not patentable and therefore the patent applied for was rejected. In its arguments, Yahoo
contended that several patents have been granted for business methods to Google and also
cited the case of Dimminaco AG v. Controller of Patents (IPLR 2002 July 255). The IPAB
observed that there should be a uniform practice, when similar inventions come up for grant
of patent before the Indian Patent Office. The IPAB further maintained that if the actual
position is that the Patent Office had been adopting different standards for different
applicants, it is not a desirable state of affairs. The IPAB stated that if other patents suffer
from the same vice of S.3 (k) then as and when the question arises, it will be dealt with. The
IPAB stated that the patentability bar cannot be ignored merely because it is alleged that in
other cases erroneous decisions have been issued.
Bilski v. Kappos
(https://www.irmi.com/articles/expert-commentary/business-method-patents-in-the-wake-of-
bilski-v-kappos#:~:text=On%20June%2028%2C%202010%2C%20the,in%20the%20field%2
0of%20commodities.)
UTILITY REQUIREMENT
Calmer v. Cook (not utility case)
Brenner v. Manson
Another landmark judgment relating to practical (specific and substantial)
utility was given in the case of Brenner v. Manson. It deals with the issue of
the extent of specific utility a claimed invention must exhibit to fulfill the
criterion. In this case, a specific use for the product was not known or
disclosed by the patentee, although it was hypothesised that it could be
screened for possible anticancer utility. The court held that a novel process
for making a known steroid did not satisfy the utility requirement because
the patent applicants did not show that the steroid served any practical
function.
The court ruled that “a process patent in the chemical field, which has not
been developed and pointed to the degree of specific utility, creates a
monopoly of knowledge which should be granted only if clearly commanded
by the statute.” The case is famous for its beacon statement “a patent is not
a hunting license.”
ANTICIPATION
PATENTIBILITY OF PROCESSES
2003 AMENDMENT
PRIOIRITY DATE
HINDSIGHT PROBLEM
