Invention that are not Patentable

MEANING OF PATENT

As already discussed, patent is a monopoly right conferred by Patent Office on an inventor to exploit his invention for a limited period of time.

According to section 2(1) (m),  “patent” means a patent for any invention granted under this Act.

It is not mandatory for an inventor to apply for a patent in respect of his invention. It is optional. The inventor may prefer to keep his invention secret instead of applying for a patent by disclosing it. However, where an inventor does not apply for a patent and exploit his invention by keeping it secret, he runs with the risk of his invention being disclosed to his competitors either by way of reverse engineering or by communication of information by someone who possesses such information and is under no obligation to keep it secret or by an independent discovery. In such a case, other persons may start manufacturing the article by using the same invention. No remedy shall be available to the inventor in such a case.

In Shinning Industries v. Shri Krishna Industries,

The Allahabad High Court held that an invention is not a property right unless it has been patented. It is due to this reason that inventors normally apply for patents and get monopoly rights for a specific period of time to exploit their inventions to the exclusion of all others.

Invention

“Invention” means a new product or process involving an inventive step and capable of industrial application.

A bare perusal of the definition of invention clearly shows that even a process involving an inventive step is an invention within the meaning of the Act. It is, therefore, not necessary that the product developed should be a totally new product.

Even if a product is substantially improved by an inventive step, it would be termed to be an invention as held in the case of Dhanpath Seth vs Nil Kamal Plastic Crates Ltd . 2008.

INVENTIONS THAT ARE NOT PATENTABLE :

WHAT ARE NOT INVENTIONS?

Section 3 outlines various situations where an invention (properly so called) can yet be not patentable.

In F. Hoffmann-La Roche Ltd. v. Cipla Ltd.,: The court stated that they relate to inventions that may otherwise meet the tests of invention’ and inventive step’ but may still not be granted patents as a matter of policy. According to section 3, followings are not inventions within the meaning of the Act.

1. Inventions which are frivolous or claims anything contrary to well established natural laws

According to section 3(a), an invention which is frivolous or which claims anything obviously contrary to well established natural laws is not to be considered as an invention. Some examples of a frivolous nature and contrary to natural laws are:

1. A machine purporting to produce perpetual motion.
2. A machine alleged to be giving output without any input.
3. A machine allegedly giving 100% efficiency.

• Invention contrary to public order or morality : An invention contrary to public order may be one the primary use of which would be a criminal act, punishable as a crime, such as an instrument for picking pockets or fraudulent appliances or preparations.

In addition, inventions relating to cloning of human beings, processes for modifying the germ line and genetic identity of human beings, uses of human embryos for industrial or commercial purposes, and processes for modifying the genetic identity of animals that are likely to cause them unnecessary sufferings may also fall under this category.

The Manual of Patent Office Practice and Procedure as modified on March 22, 2011 lists out following examples inventions contrary to public order or morality:

1. Any device, apparatus or machine or method for committing theft/burglary;
2. Any machine or method for counterfeiting of currency notes;
3. Any device or method for gambling;
4. An invention the use of which can cause serious prejudice to human beings, plants and animals;
5. An invention, the primary or intended use of which is likely to violate the well accepted and settled social, cultural, legal norms of morality, e.g. a method for cloning of humans;
6. An invention, the primary or proposed use of which would disturb the public order e.g. a device for house-breaking;
7. Inventions, the intended use or commercial exploitation of which is found to be injurious to public, animal or plant life or health, such as, a method of adulteration of food. However, if the primary or intended purpose Or commercial exploitation of a claimed invention is not causing serious prejudice odi to human, animal or plant life or health or to the environment, such subject matter may be considered to be an invention and may be patentable, e.g. a pesticide.

• Discovery of a Scientific Principle or Living Thing or Non-living Substance

According to section 3(c), the mere discovery of a scientific principle or the formulation of or discovery of any living thing or non-living substance occurring in nature is not an invention. Thus, a claim for discovery of scientific principle is not considered to be an invention, but such a principle when used with a process of manufacture resulting in a substance or an article may be considered to be an invention.

For example, the fact that a known material or article is found to have a hitherto unknown property is a discovery and not an invention. But if the discovery leads to the conclusion that the material can be used for making a particular article or in a particular process, then the article or process could be considered to be an invention. Finding of a new substance or micro-organism occurring freely in nature is a discovery and not an invention.

• Mere discovery of a new form of a known substance

According to section 3(d), the following are not inventions and hence not patentable:

1. mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance;
2. the mere discovery of any new property of a known substance;
3. the mere discovery of new use for a known substance;
4. the mere use of a known process unless such known process results in a new product or employs at least one new reactant;
5. the mere use of a known machine or apparatus.

According to the explanation to section 3(d), salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of such known substance may be considered as patentable only if they differ significantly in properties with regard to efficacy.

In Novartis AG v. Union of India, the Supreme Court discussed the meaning of the term “efficacy” in detail. Efficacy means “the ability to produce a desired or intended result. Like in the case of medicine that claims to cure a disease, the test of efficacy can only be “therapeutic efficacy”.

• Substance obtained by a mere admixture

Section 3(e) provides that a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance is not an invention. An admixture resulting in synergistic properties is not considered as mere admixture, e.g., a soap, detergent, lubricant and polymer composition etc, and hence may be considered to be patentable.

In general, all the substances which are produced by mere admixing, or a process of be patentable.’ Or a process of producing such substances should satisfy the requirement of synergistic effect in order to be patentable.

In an infringement suit M/s Stanpack Pvr. Ltd. v. MIs. Oswal Trading Co. Ltd.  the defendant challenged the validity of the patent of plaintiff for the invention for the manufacture of pouch for storage and dispensing of a liquid such as lubricating oil. The Delhi High Court while revoking the patent on the ground that the invention was not new and not an invention within the meaning of section 3, observed:

“ Thickness of the plastic film/layer depends upon the tolerance of the contents of the pouch. Thus the same is merely an arrangement and re-arrangement of the mixture of the material and cannot be termed as a novel concept and does not have any novelty. Such arrangement and re-arrangement of mixture of the materials cannot become an invention, for it is only an improvement by adding microns as per the strength of the layers.”

• Duplication of known devices functioning independently

The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way is not an invention according to section 3(f).

When two or more features of an apparatus or device are known, and they are juxtaposed without any interdependence on their functioning, they should be held to have been already known, e.g., an umbrella with fan, bucket fitted with torch, clock and transistor in a single cabinet. These are not patentable, since they are nothing but mere arrangement and rearrangement of items without having any working interrelationship between them and are devices capable of functioning independently of each other.

• Method of Agriculture or Horticulture

A method of agriculture or horticulture is not an invention as per section 3(h). Some of the examples under this clause may include:

1. A method of producing a plant, even if it involved a modification of the conditions under which natural phenomena would pursue their inevitable course (for instance a greenhouse);
2. A method of producing improved soil from the soil with nematodes by treating the soil with a preparation containing specified phosphorothioates:
3.  A method of producing mushrooms;
4. A method for cultivation of algae.
5. Process for the medicinal and surgical treatment of human beings or animals
6. Any process for the medicinal, surgical, curative, prophylactic (diagnostic, therapeutic) or other treatment of human beings or animals to render them free of disease is not patentable as per the provisions of section 3(). For instance, more efficient or less harmful dosages in known treatment, the administration of a bacterium to secure immunity from a disease and the employment of known medical equipment for new treatments, remained unpatentable.

According to the Manual of Patent Office Practice and Procedure, following are not to be considered as inventions:

1. Medicinal methods: This includes, for example, a process of administering medicines orally, or through injectables, or topically or through a dermal patch.
2. Surgical methods: This includes, for example, a stitch-free incision for cataract removal.
3. Curative methods: This includes, for example, a method of cleaning plaque from teeth.
4. Prophylactic methods: This includes, for example, a method of vaccination.
5. Diagnostic methods: Diagnosis is the identification of the nature of a medical illness, usually by investigating its history and symptoms and by applying tests.

• Plants and Animals other than Micro-organisms

According to section 3G), plants and animals in whole or any part thereof, seeds, varieties and species and essentially biological processes for production or propagation of plants and animals are not inventions. The micro-organisms, however, may be patentable provided they are not discovered from the nature and there is sufficient man-made interference in them. For instance, genetically modified microorganisms may be patentable subject to other requirements of patentability.

It is noteworthy that plant varieties are subject matter of protection under the Protection of Plant Varieties and Farmers’ Rights Act, 2001.

1. Mathematical and Business Method

A mathematical or business method or a computer programme per se or algorithms are not inventions and hence not patentable as per the provisions of section 3(k).

Mathematical methods are considered to be acts of mental skill. A method of calculation, formulation of equations, finding square roots, cube roots and all other methods directly involving mathematical methods are therefore not patentable.

1. Literary, Dramatic, Musical or Artistic Work or Cinematographic Works, etc.

A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions is not an invention as per section 3(). All these are subject-matters of protection under the Copyright Act, 1957.

1. Method of Performing Mental Act or Playing Game

According to section 3(m), a mere scheme or rule or method of performing mental act, such as method of teaching or learning, or method of playing game, such as method of playing chess, is not an invention.

1. A Presentation of Information

A presentation of information is not an invention according to section 3(n). Thus, any manner, means or method of expressing information whether visual, audible or tangible by words, codes, signals, symbols, diagrams or any other mode of representation is not patentable.

For instance, railway time-table, 100 years calendar etc. are not invention.

Traditional knowledge

According to section 3(p), an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components, is not patentable. Since traditional knowledge already exists, it cannot be patented. The Government of India has prepared huge database, known as Traditional Knowledge Digital Library (TKDL) in which traditional knowledge has been documented to a very great extent. Thus, TKDL is a very useful database for the patent office to find out whether a particular invention is based on traditional knowledge.

In Dhanpat Seth v. Nil Kamal Plastic Crates Ltd., 2008 the court observed that a Kilta is a traditional product which has been used since time immemorial for carrying produce including agricultural produce in hill areas especially in the State of Himachal Pradesh. The traditional Kilta is made of bamboo.

The Division Bench held that “the device developed by the plaintiffs is in fact the result of traditional knowledge and aggregation/duplication of known products such as polymers and, therefore, cannot be said to be an invention.”