International Journal of Law

www.lawjournals.org
ISSN: 2455-2194
Received: 29-05-2021, Accepted: 14-06-2021, Published: 29-06-2021
Volume 7, Issue 3, 2021, Page No. 226-230

Substantive requirements of patentability in India

Monica Raje
Associate Professor, National Law Institute University, Bhopal, Madhya Pradesh, India

Abstract
All members of the World Trade Organisation (WTO) are bound by the obligations under the Agreement on Trade- Related
Aspects of Intellectual Property Rights (The TRIPS). India is one of the founding members of the GATT and thus a member of
the WTO from its inception from January 1, 1995, and is bound by the obligations under TRIPS Agreement like all other
members of the WTO. In India, patents are governed by the Patents Act, 1970. This paper seeks to study the substantive
requirements of patent law in light of the amendments to the Patents Act, 1970 in order to meet India’s obligations under the
WTO. The paper also delves into the legislative history of patent law in India. The subject matter of a patent is an invention.
The Act defines the term invention as a new product of process involving an inventive step and capable of industrial
application. In addition, the Act, specifically bars certain subject matter from being patented under sections 3 and 4. The paper
focuses on the concepts involved in patentability of an invention and analyses judicial pronouncements in order to understand
the various requisites of patentability namely; patentable subject matter, new invention, inventive step and capable of
industrial application.

Keywords: invention, patent, new, inventive step, capable of industrial application

Introduction recommendation prompted the Government to introduce a

Patent is an exclusive right granted by the government of a bill (Bill no. 59 of 1953) in Parliament, but the bill was not
country for a specific duration to an invention. In India pressed and it was allowed to lapse.
patents are governed by The Patents Act, 1970 (The Act). In 1957, another committee came to be appointed under the
The provisions of the Patens Act, 1970 govern grant of chairmanship of Justice N. Rajagopala Ayyangar to take a
patents in India. Since its enactment, the Act has been fresh look at the law of patent [1]. Justice Ayyangar observed
amended on five occasions by: that the provisions of the Patent law have to be designed,
 The Repealing and Amending Act, 1974 (Act 56 of with special reference to the economic conditions of the
1974) country, the state of its scientific and technological
 The Delegated Legislation Provisions (Amendment) advancement, its future needs and other relevant factors, and
Act, 1985 (Act 4 of 1985) so as to minimize, if not to eliminate, the abuses to which a
 The Patents (Amendment) Act, 1999 (17 of 1999) system of patent monopoly is capable of being put. Bearing
 The Patents (Amendment) Act, 2002 (38 of 2002) in view the matters set above, he recommended retaining the
 The Patents (Amendment) Act, 2005 (15 of 2005) patent system, but with a number of improvements. One of
The first two amending Acts listed above were made to the improvements suggested was to define, with precision,
reflect the changes within India, while the later three those inventions which should be patentable and equally
amending Acts made substantive changes to the Indian clearly identify certain inventions, the grant of patents to
patent laws in order to meet India’s obligations under which would retard research, or industrial progress, or be
TRIPS. detrimental to the national health or well- being, and to
At the time of Independence, India’s patent regime was make those inventions non-patentable [2]. Justice Ayyangar
governed by the Patents and Designs Act, 1911, which had submitted a comprehensive Report on Patent Law Revision
provisions both for product and process patents. It was, in September 1959 and the new law of patent, namely, the
however, generally felt that the patent law had done little Patents Act, 1970, came to be enacted mainly based on the
good to the people of the country. The way the Act was recommendations of the report, and came into force on
designed benefited foreigners far more than Indians. It did April 20, 1972, replacing the Patents and Designs Act, 1911.
not help at all in the promotion of scientific research and Following the Uruguay round of multilateral negotiations
industrialization in the country, and it curbed the under the General Agreement on Tariffs and Trade (GATT),
innovativeness and inventiveness of Indians. the Agreement on Trade- Related Aspects of Intellectual
Shortly after Independence, therefore, in 1949, a committee Property Rights (The TRIPS) was arrived at and it came into
was constituted under the chairmanship of Justice Dr. force on January I, 1995. The TRIPS Agreement is the most
Bakshi Tek Chand, to undertake a comprehensive review of comprehensive multilateral agreement to set detailed
the working of the 1911 Act. The Committee submitted its minimum standards for the protection and enforcement of
interim report on August 4, 1949 and the final report in intellectual property rights, and aims at harmonizing
1950 making recommendations for prevention of misuse or national intellectual property systems. All members of the
abuse of patent rights in India. The committee’s World Trade Organisation (WTO) are bound by the

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obligations under the TRIPS Agreement. India is one of the Patentable Subject Matter
founding members of the GATT and thus a member of the A patent is granted on an invention. But not all inventions
WTO from its inception from January 1, 1995, and is bound are patentable. The Act does not name the products or
by the obligations under TRIPS Agreement like all other processes which are patentable. The Act under sections
members of the WTO. provides an exhaustive list of subject matter which is not
Prior to India’s accession to the WTO, the 1970 Act, had eligible for patent protection [15].
been undisturbed for a period of 29 years. Beginning in It may be noted that the works enumerated under the
1999, a series of amendments were enacted in order to bring provisions of Section 3 of the Act seem to have been
the 1970 Act into compliance with TRIPS. The first excluded primarily for four reasons. Firstly, certain works
amendment came in 1999, to provide interim protection to do not rise to the dignity of an invention for lack of novelty,
inventions relating to pharmaceutical products by accepting inventive step or capable of industrial application and hence
mail box applications which would give priority to such they are excluded. Such types of works are identified by
inventions until the mail box opened in 2005 with the clauses (a), (c), (d), (e), (f) and (p). Secondly, certain works
introduction of product patents in fields including are excluded from patenting for they are protected by other
pharmaceuticals [3]. The amendment also provided for the intellectual property regime like those enumerated in clauses
grant of exclusive marketing rights for such products [4]. The (j), (k), (l) and (o). Thirdly, certain works are left entirely in
Act was again amended in 2002 to incorporate the second the public domain particularly those enumerated under
set of TRIPS obligations i.e. extension of term of patents to clauses (k), (m) and (n). Fourthly, certain works are
20 years, reversal of burden of proof, etc [5]. and in 2005 for excluded for reasons of policy particularly those specified
granting product patents in all fields of technology including under clauses (h), (i) and (j).
chemicals, food, drugs and agrochemicals, etc [6]. The Hon‘ble Supreme Court in the matter of Novartis AG
The main aim of the Patent Act has been identified by the Vs. Union of India [16], recognising that the purpose of
Supreme Court in Bishwanath Prasad Radhey Shyam v. section 3(d) was to prevent evergreening of patents,
Hindustan Metal Industries [7] as under: observed as under:
The main aim of Patent law is to promote scientific We have, therefore, no doubt that the amendment/addition
research, new technology and industrial progress. Providing made in section 3(d) is meant especially to deal with
exclusive privilege to own, use or sell the meod or the chemical substances, and more particularly pharmaceutical
product patented for a limited period, stimulates new products. The amended portion of section 3(d) clearly sets
invention of commercial utility. up a second tier of qualifying standards for chemical
The Act does not give a list of subject matter that is eligible substances/ pharmaceutical products in order to leave the
for patent protection. It instead gives a list [8] of subject door open for true and genuine inventions but, at the same
matter on which patent cannot be granted. The Act defines time, to check any attempt at repetitive patenting or
the term patent [9] as: extension of the patent term on spurious ground
"patent" means a patent for any invention granted under this It was further held by the Apex Court in the case of
Act; medicines, efficacy means ―therapeutic efficacy‖ and
The definition of a patent makes it clear that the subject physico-chemical properties of substances do not meet the
matter of a patent is an invention. However, the term requirement of ―therapeutic efficacy.
invention may be different from the perspective of a
scientist and that of the law. In order to qualify for patent Further section 4 of the Act provides
protection, the subject matter on which patent protection is No patent shall be granted in respect of an invention relating
being sought must meet the legal requisites of the term to atomic energy falling within sub – section (1) of section
invention. The term invention [10] is defined in the Act as 20 of the Atomic Energy Act, 1962.
invention" means a new product or process involving an
inventive step and capable of industrial application. Section 20(1) of the Atomic Energy Act provides
This definition of an invention identifies what is ordinarily No patent shall be granted for inventions which in the
referred to as the requirements of patentability. In order to opinion of the Central Government are useful for or relate to
be granted patent protection, the applicant must satisfy the the production, control, use or disposal of atomic energy or
patent office that the product or process on which protection the prospecting, mining, extraction, production, physical or
is sought is new, involves an inventive step and is capable chemical treatment, fabrication, enrichment, canning or use
of industrial application. The terms ‘new invention’ [11], of any prescribed substance or radioactive substance or the
‘inventive step’ [12] and ‘capable of industrial application’ ensuring of safety in the atomic energy operation.
[13]
have been defined under the Act. In addition to novelty, This exclusion is based on the principle of security of state
inventive step and capable of industrial application being an and non – proliferation of atomic energy.
essential condition for patentability, lack of any of these
requirements is also a ground to oppose the patent under Novelty
section 25 and to challenge the validity of a patent under The Act defines the tern “new invention” [17] as under
section 64 of the Act. new invention" means any invention or technology which
Once a patent is granted by the patent office nobody can has not been anticipated by publication in any document or
make, use or sell the patented invention without seeking the used in the country or elsewhere in the world before the date
permission of the patentee. The Act defines a patentee [14] of filing of patent application with complete specification,
as: i.e., the subject matter has not fallen in public domain or
The person for the time being entered on the register as the that it does not form part of the state of the art Thus, in order
grantee or proprietor of the patent. We will now look at the to qualify for patent protection, the product or process must
essential requirements of patentability. not be a part of the state of the art. The Act does not define

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the term state of the art. The U.S. Patent Act uses the term first inventor himself or any other person; for the public
prior art in the context of novelty. The U.K Patent Act uses cannot be deprived of the right to use the invention........ the
the word state of the art [18] as under: public already possessing everything that he could give.
An invention shall be taken to be new if it does not form In Monsanto Company v. Coramandal Indag Products (P)
part of the state of the art. Ltd. [21], the Supreme Court observed as under:
The state of the art in the case of an invention shall be taken Under sec. 64(e), a patent may be revoked if the invention
to comprise all matter (whether a product, a process, so far as claimed in any claim of the complete specification
information about either, or anything else) which has at any is not new, having regard to what was publicly known or
time before the priority date of that invention been made publicly used in India before the date of the claim, etc.
available to the public (whether in the United Kingdom or To satisfy the requirement of being publicly known as used
elsewhere) by written or oral description, by use or in any in clauses (e) and (f) of sec. 64(1), it is not necessary, that it
other way. should be widely used to the knowledge of the consumer
Prior art is any evidence that the invention was already public. It is sufficient if it is known to the persons who are
known publicly or available, in whole or in part, before the engaged in the pursuit of the knowledge of the patented
effective filing date of your patent application. The concept product or process either as men of science or men of
of prior art varies from country to country. Prior art can commerce or consumers.
include the following:
1. A product that was available for sale. Inventive Step
2. Commercial use of the invention. The next requirement of patentability is inventive step. The
3. Articles, publications or journals. Patents Act, 1970 and the Patents Act, 1977 of U.K uses the
4. Presentation at public events. word inventive step. The U.S. Patent Act, uses the word non
5. Public knowledge or use of the invention. – obviousness [22]. TRIPS recognises that the term inventive
6. A previously filed patent application, once the step and non – obviousness can be used interchangeably [23].
application becomes a published application or an The Patents Act, 1970 defines the term inventive step [24] as
issued patent. under:
Inventive step" means a feature of an invention that involves
Additionally, the information to be considers as prior art it technical advance as compared to the existing knowledge or
must have been publicly disclosed or publicly available having economic significance or both and that makes the
before the effective filing date of your patent application. invention not obvious to a person skilled in the art. The
The definition of new invention as given under the Act Supreme Court in Bishwanath Prasad Radhey Shyam [25]
makes it clear that the critical date for determining if case made the following observations:
information qualifies as prior art is date of filling for patent In order to be patentable, an improvement on something
application with complete specification. This is also known before or a combination of different matters already
indicative of the fact that India follows a first to file system known, should be something more than a mere workshop
of patent application as mandated by TRIPS. `improvement, and must independently satisfy the test of
The Bombay High Court in Alibhai Chakubhai Jariwala vs invention or an inventive step. It must produce a new result,
Chimanlal Chunilal [19] has identified the reason for novelty or a new article or a better or cheaper article than before.
as a requirement of patentability as under: The new subject matter must involve "invention" over what
The two features necessary to the validity of a patent are is old. Mere collocation of more than one, integers or things,
novelty and utility, but the real test is the novelty of the not involving the exercise of any inventive faculty does not
invention. Novelty is essential, for otherwise there would be qualify for the grant of a patent
no benefit given to the public and consequently no
consideration moving from the patentee. Referring to the test for determining inventive step the
The Supreme Court in Bishwanath Prasad Radhey Shyam v. Court further observed
Hindustan Metals Industry [20] made the following Had the document been placed in the hands of a competent
observation with respect to novelty: craftsman (or engineer as distinguished from a mere
The fundamental principle of Patent law is that a patent is artisan), endowed with the common general knowledge at
granted only for an invention which must have novelty and the 'priority date', who was faced with the problem solved
utility. It is essential for the validity of a patent that it must by the patentee but without knowledge of the patented
be the inventor's own discovery as opposed to mere invention, would he have said, "this gives me what I want?"
verification of what was, already known before the date of (Encyclopaedia Britannica; ibid). To put it in another form:
the patent. "Was it for practical purposes obvious to a skilled worker,
The Court further observed: in the field concerned, in the state of knowledge existing at
Whether the "manner of manufacture" patented, was the date of the patent to be found in the literature then
publicly known, used and practised in the country before or available to him, that he would or should make the invention
at the date of the patent? If the answer to this question is the subject of the claim concerned?" Halsbury, 3rd Edn,
'yes', it will negative novelty or 'subject matter'. Prior public Vol. 29, p. 42 referred to by Vimadalal J. of Bombay High
knowledge of the alleged invention which would disqualify Court in Farbwrke Hoechst & B. Corporation v. Untchan
the grant of a patent can be by word of mouth or by Laboratories.
publication through books or other media. "If the public The Madras High Court in Bajaj Auto Ltd. v. TVS Motor
once becomes possessed of an invention", says Hindmarch Co [26] interpreting the term obvious as used in the definition
on Patents (quoted with approval by Fry L. J. in of inventive step observed as under:
Humpherson v. Syer, "by any means whatsoever, no Even though the term "obvious" has not been denied under
subsequent patent for it can be granted either to the true or the Patents Act, it can be safely stated to be a circumstance

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where a person of skill in the field, on-going through the novelty of the claimed invention is established and then
specification would complete the product. Therefore, even if proceeds to conduct examination on whether the claimed
any of the two ingredients, viz., technical advance or invention involves the inventive step [31].
economic significance or both are available, if such Accordingly, the following points need to be objectively
invention enables a person of skill in the field, on going judged to ascertain whether, looking at the invention as a
through the specification would complete the product, such whole, the invention does have inventive step or not:
invention can never be treated as an "inventive step" and 1. Identify the "person skilled in the art", i.e. competent
consequently no patent can be validly issued. Therefore, it is craftsman or engineer as distinguished from a mere
clear that a patent must have the characters of novelty, non- artisan;
obviousness and enablement, out of which, enablement 2. Identify the relevant common general knowledge of
being the concept of putting the novelty into action and all that person at the priority date;
the above said ingredients must consecutively be present to 3. Identify the inventive concept of the claim in question
have a valid patent. or if that cannot readily be done, construe it;
Referring to the Rado v. John Tye & Sons Ltd. [27] the High 4. Identify what, if any, differences exist between the
Court further observed: matter cited as forming part of the "state of the art" and
Whether the alleged discovery lies so much out of the Track the inventive concept of the claim or the claim as
of what was known before as not naturally to suggest itself construed;
to a person thinking on the subject, it must not be the 5. Viewed without any knowledge of the alleged invention
obvious or natural suggestion of what was previously as claimed, do those differences constitute steps which
known. would have been obvious to the person skilled in the art
The Delhi High Court in Cipla Ltd. v. F Hoffman – La or do they require any degree of inventive ingenuity?
Roche Ltd. [28] identified the characteristics of a person [32]

ordinarily skilled in the art as under:

The features of a person skilled in the art are that of a person Capable of Industrial Application
who practices in the field of endeavour, belongs to the same The last substantive requirement of patent eligibility is the
industry as the invention, possesses average knowledge and subject matter i.e. product or process must be capable of
ability and is aware of what was common general industrial application. The Patents Act, 1970 and the Patents
knowledge at the relevant date. Act, 1977 of U.K uses the word capable of industrial
The Court also referred to the U.S. Supreme Court decision application. The U.S. Patent Act, uses the word useful.
of Graham v. John Deere Co. of Kansas [29] which made the TRIPS recognises that the term capable of industrial
following observation: application and useful can be used interchangeably [33].
In determining the level of ordinary skill in the art, you
should first determine whether there was a number of people The Patents Act, 1970 defines the term capable of
who regularly worked to solve the type of problem that the industrial application [34] as under
invention solved, and, if so, determine the level of ordinary Capable of industrial application, in relation to an invention,
skill of such people at the time the invention was made. You means that the invention is capable of being made or used in
must consider the level of skill as to the time the invention an industry. The Delhi High Court in Merck Sharp And
was made. Among the factors that may be considered in Dohme Corporation v. Glenmark Pharmaceuticals [35]
your determination are: referred to the decision of the UK Court of Appeal in Eli
1. The various ways that others sought to solve the Lily v. Human Genome Sciences [36] where the Court of
problems existing; Appeals identified the following important elements of the
2. The types of problems encountered; term capable of industrial application:
3. The rapidity with which new inventions are made in 1. The patent must disclose "a practical application" and
this art; "some profitable use" for the claimed substance, so that
4. The sophistication of the technology involved; and the ensuing monopoly "can be expected [to lead to]
5. The educational background of those actively working some ... commercial benefit";
in the field. 2. A "concrete benefit", namely the inventions "use ... in
industrial practice" must be "derivable directly from the
The Court also referred to the triple test of obviousness has description", coupled with common general knowledge;
been laid down by the U.S. Supreme Court in KSR 3. A merely "speculative" use will not suffice, so "a vague
International Co v. Teleflex Inc. [30] i.e. teaching, and speculative indication of possible objectives that
suggestion, or motivation as under: might or might not be achievable" will not do;
Under § 103, the scope and content of the prior art are to be 4. The patent and common general knowledge must
determined; differences between the prior art and the claims enable the skilled person "to reproduce" or "exploit" the
at issue are to be ascertained; and the level of ordinary skill claimed invention without "undue burden", or having to
in the pertinent art resolved. Against this background, the carry out "a research programme".
obviousness or no obviousness of the subject matter is
determined. Such secondary considerations as commercial The Examiner shall assess if the claimed invention is
success, long felt but unsolved needs, failure of others, capable of use in any industry or made using an industrial
etc., might be utilized to give light to the circumstances process. Typically, the specification explains the industrial
surrounding the origin of the subject matter sought to be
applicability of the disclosed invention in a self-evident
patented.
While determining patentability of the invention, an manner. If it is not, a mere suggestion that the matter would
Examiner first conducts investigation as to whether the be industrially applicable is not sufficient [37].

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Conclusion 33. Supra n. 23.

A patent is granted on an invention. A person seeking patent 34. Section 2(1)(ac).
protection has establish to the patent office that the subject 35. (OS) 190/2013, C.M. APPL. 5755/2013, 466/2014 &
matter on which he seeks protection is an invention. Further, 467/2014.
there is a difference between invention in the eyes of a 36. [2001] ECWA 33.
scientist and in the eyes of law. Hence in order to receive 37. Supra n. 31.
patent protection an invention must be such as per the
requirements of the Patents Act, 1970. Accordingly, an
applicant for patent protection has to meet the four
substantive requirements of patent law.
1. New Invention/Novelty: A product or process on which
protection is sought must not be published or available
in prior art of the country or elsewhere in the world
before the date of patent filing.
2. Inventive Step: Invention which can be done by any
ordinary skilled person is obvious and cannot be
patentable.
3. Capable of Industrial Application/ Usefulness:
invention must be capable of being made or used in an
industry.
4. Patentable Subject matter: The Act under sections 3 and
4 specifically bars certain subject matter from patent
protection. Therefore, even if a subject matter falls
within the legal definition of invention, a patent will not
be granted, if it falls within sections 3 and 4 of the Act.

References
1. N Rajagopala Ayyangar, report on the revision of the
patents law, Government of India, 1959.
2. Novartis AG. v. Union of India
3. TRIPS Article 70.8.
4. TRIPS Article 70.9.
5. TRIPS Article 65.
6. TRIPS Article 65.4
7. AIR 1982 SC 1444.
8. Section 3.
9. Section 2(1)(m).
10. Section 2(1)(j).
11. Section 2(1)(l).
12. Section 2(1)(ja).
13. Section2(1)(ac).
14. Section 2(1)(m).
15. See sections 3 and 4 of the Patents Act, 1970.
16. Civil appeal Nos. 2706-2716 OF 2013 (SC).
17. Section 2(1)(l).
18. Section 2, Patents Act, 1977.
19. (1935) 37 BOMLR 665
20. Supra n. 7.
21. 1986 AIR 712.
22. Section 103.
23. ttps://www.wto.org/english/docs_e/legal_e/trips_e.htm#
fnt-6. (last visited on 10/06/21).
24. Section 2(1)(ja).
25. Supra n. 7.
26. 2008 (36) PTC 417 Mad.
27. (1967) RPC 297.
28. 148 (2008) DLT 598.
29. 383 U.S.1 (1966).
30. 550 U.S. 398 (2007).
31. Draft Manual of Patent Practice and Procedure, (Patent
Office, India, 2019. Text available at: http://www.
patentoffice.nic.in/ipr/patent/manual-2052005.pdf. Last
visited 10/06/21.
32. Id.

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