NON PATENTABLE INVENTIONS

Introduction to Patent
A patent is a statutory right granted by the government to an inventor, giving them exclusive
rights over their invention for a limited period, typically 20 years in India. By granting an
exclusive privilege to inventors, the patent system aims to encourage innovation and allow
inventors to commercialize their inventions without facing immediate competition.

Section 2(m) - Definition of Patent

Under the Patents Act, 1970, Section 2(m) provides the statutory definition of a patent. It
states: "Patent means a patent for any invention granted under this Act."
This definition tells that a patent is an official grant for a new and useful invention, which is
recognized by the government under the provisions of the Act. An invention eligible for a
patent must meet specific criteria, including novelty, inventiveness, and industrial
applicability.

According to Section 2(1)(j) of the Patents Act, 1970, an invention is defined as:
"a new product or process involving an inventive step and capable of industrial application."
This definition highlights three critical components for an invention to be patentable:
⚫ Novelty (it must be a new product or process),
⚫ Inventive Step, and
⚫ Industrial Application.

Intangibles are non patentable

Intangible concepts—such as abstract ideas, algorithms, or theoretical models—are not
patentable. The patent system protects the practical application of ideas, not the ideas
themselves. An invention must yield a tangible result, such as a product or a process that
offers technical progress or industrial benefits.

Inventions Not Patentable Under the Indian Patents Act, 1970

The Indian Patents Act, 1970 provides a framework for what can be patented in India.
However, certain categories of inventions are excluded from patentability to maintain ethical
standards, protect public interests, and ensure that patents are granted only for genuine
technological advancements.

According to section 3:

1. Frivolous or Contrary to Natural Laws

Inventions that are frivolous or clearly violate established natural laws are not patentable. For
example, inventions claiming perpetual motion machines, which defy the principles of
physics, are excluded.

2. Inventions Against Public Order or Morality

If the primary purpose or exploitation of an invention goes against public order or morality or
can harm human, animal, or plant life, health, or the environment, it cannot be patented. This
provision prevents the patenting of inventions that could be socially or ethically controversial.

3. Mere Discovery of Scientific Principles or Natural Substances

Discovering a scientific principle or formulating an abstract theory is not patentable. Similarly,
finding a naturally occurring living or non-living substance does not qualify as an invention.

4. New Forms of Known Substances without Enhanced Efficacy

The discovery of a new form of an already known substance that does not lead to an
improvement in its efficacy is not patentable. For example, if a known drug is reformulated
without improving its therapeutic effect, it is not eligible for a patent.
F. Hoffmann-La Roche Ltd. vs. Cipla Ltd.
This case centered on a dispute over a pharmaceutical drug's patent, where Roche alleged that
Cipla infringed upon its patented cancer treatment. The Indian courts, emphasizing Section
3(d) of the Patents Act, ruled that minor modifications of known substances without a
significant improvement in therapeutic efficacy are not patentable.

5. New Properties of Known Substances

New properties or uses of a known substance, or the mere use of a known process or machine
unless it results in a new product or employs a novel element, are not patentable.

6. Mere Arrangement or Duplication of Known Devices

Simple arrangements, re-arrangements, or duplication of existing devices, where each
component functions independently, do not qualify as inventions. For example, combining
two known gadgets without creating a novel functionality is not patentable.

7. Agricultural or Horticultural Methods

Methods of agriculture or horticulture, such as new ways of cultivating crops or plants, are
not eligible for patent protection.

8. Medical and Veterinary Treatments

Processes related to medical, surgical, curative, diagnostic, or similar treatments for humans
or animals are not patentable. This includes methods that aim to treat diseases or enhance the
economic value of animals.

9. Biological Processes and Plants or Animals

Entire plants and animals, or parts thereof (excluding micro-organisms), are not patentable.
This also covers biological processes used for the propagation of plants and animals,
including seeds and species.

10. Mathematical and Business Methods or Computer Programs

Mathematical methods, business methods, computer programs (when viewed as standalone),
and algorithms are not considered patentable inventions. However, a technical application of
a computer program may be patentable if it demonstrates technical advancement.

11. Artistic and Aesthetic Works

Literary, dramatic, musical, artistic works, and other forms of aesthetic creations, such as
cinematographic and television productions, are not covered by patents. These are typically
protected under copyright law.

12. Schemes, Rules, or Methods for Mental Acts or Games

Schemes, rules, or methods for performing mental activities or playing games are not
patentable. This includes, for example, strategies for board games or card games.

13. Presentation of Information

The presentation of information, regardless of its format or content, is excluded from patent
protection.

14. Topography of Integrated Circuits

The layout or design of integrated circuits (often referred to as topography) cannot be
patented, although they may be protected under separate legislation.

15. Traditional Knowledge

Inventions that are effectively traditional knowledge, or that involve properties known from
traditional practices or materials, are not eligible for patent protection. This includes simple
aggregations or duplications of known properties of traditional components.
Inventions Related to Atomic Energy Not Patentable
Section 4 of the Patents Act, 1970 explicitly states that no patent shall be granted for
inventions related to atomic energy that fall under sub-section (1) of section 20 of the Atomic
Energy Act, 1962 (33 of 1962).

Case laws
1. Asian Electronics Ltd. vs. Hayworths India Ltd.
The case involved a patent claim over an industrial process related to lighting technology. The
court concluded that the rearrangement or reconfiguration of known components, without any
genuine inventive step or technical advancement, was not patentable. The ruling underscored
that a mere combination of existing elements, lacking novelty, does not merit patent
protection.

2. Eli Lilly and Company's Application

Eli Lilly's application sought patent protection for a medical method involving a therapeutic
process. The patent was rejected because, under Indian law, methods of medical treatment are
non-patentable.

3. Reynolds vs. Smith

This case addressed a business method patent dispute, where the court ruled that business
schemes or rules do not qualify for patents. The Indian Patents Act specifically excludes
business methods and mental acts from patent eligibility, reinforcing that patents should be
awarded for technological innovations with tangible applications rather than abstract concepts
or procedures.

COMPULSARY LICENSE

A patent grants the creator exclusive rights to an invention, allowing them to control its use,
manufacture, and sale for a limited time. This exclusivity covers both new products and
processes, which should offer innovative solutions to existing problems. However,
compulsory licensing serves as an exception. A compulsory licence is a legal authorization
given by the government or the Controller to a third party, allowing them to make, use, or sell
a patented product or process without needing the patent owner's permission. This licence is
typically granted to ensure that important products, like medicines or technologies, are
accessible to the public.

In India, compulsory licences are governed by the Indian Patents Act, 1970 (Sections 84-94),
and at the international level, they are covered under the TRIPS Agreement.

Section 84 of the Patents Act permits the issuance of compulsory licences after three years
from the date of patent grant. Any interested person can apply to the Controller of Patents for
a compulsory licence based on specific grounds:

1. Reasonable Requirements of the Public Are Not Met: If the public's needs regarding the
patented invention are not fulfilled, compulsory licensing can be sought. This includes:

⚫ A refusal to grant licences on reasonable terms causing harm to the existing or new
industries in India.
⚫ Inadequate supply of the patented product within India or unreasonable terms for access.
⚫ Hindrance in developing an export market for the patented product manufactured in India.
⚫ Negative impacts on commercial activities in India due to restricted licensing.
2. Patented Invention Not Available at Reasonably Affordable Prices: If the patented
invention is priced too high and beyond the reach of the general public, a compulsory licence
may be justified to make it accessible.

3. Patented Invention Not Used Within India: If the invention is not being manufactured or
applied in India on a sufficient scale, despite its potential to be commercially viable, a
compulsory licence can be considered.

Revocation of Patent
Section 85 allows the revocation of a patent if the compulsory licence conditions remain
unmet after two years. An application can be filed if the invention is not adequately available
in India or if the public's reasonable requirements are still unsatisfied.

Protection for Patentees

While the law supports public welfare, it also safeguards patentees' interests. Under Section
86, the Controller can delay the compulsory licence or patent revocation if the patentee
demonstrates genuine efforts to make the product available at a reasonable price, allowing up
to twelve months' extension.

Procedure for Compulsory Licensing Applications

Section 87 outlines the procedure, requiring the applicant to notify the patentee and publish
the application. The patentee can oppose within a specified period, leading to a hearing to
resolve the dispute.

Controller's Powers
The Controller has discretion to adjust or grant licences based on the situation, especially if
unreasonable licensing terms by the patentee hinder the product's use or sale. They aim to
ensure the invention's commercial availability and prevent unjust treatment of inventors.

Section 90 of the Patents Act outlines specific conditions that must be adhered to when
issuing a compulsory licence:

⚫ Reasonable Royalty: The royalty must be fair, considering the invention's nature, the
patentee's development costs, and the expenses related to obtaining and maintaining the
patent.
⚫ Full Utilization by Licensee: The licensee should fully exploit the patented invention
while earning a reasonable profit.
⚫ Reasonable Pricing: The patented product should be accessible to the public at a fair
price.
⚫ Non-Exclusive Licence: The licence must not exclude others from receiving licences for
the same invention, ensuring broader access.
⚫ Non-Transferable Rights: The rights granted to the licensee cannot be transferred to
another party.
⚫ Duration of the Licence: The licence should last for the remainder of the patent term,
unless a shorter duration is deemed beneficial to the public interest.
⚫ Supply Focus in Indian Market: The primary aim of the licence should be to serve the
Indian market, though export of the product may be allowed if necessary.
⚫ Public Use for Semiconductor Technology: If the technology involves semiconductors,
the licence should be for non-commercial, public use.
⚫ Addressing Anti-Competitive Practices: If the licence aims to counter anti-competitive
behavior, the licensee can export the patented product if required.
Compulsory Licensing by Government Notification
Under Section 92, the Indian government can mandate compulsory licensing in national
emergencies, extreme urgency, or public non-commercial use. This fast-tracks the process,
bypassing usual procedures.

Termination of Compulsory Licence

Section 94 allows for the termination of a compulsory licence if the original conditions no
longer exist, with the licensee given a chance to contest the termination.

Cases
1. Natco Pharma Ltd. vs. Bayer Corporation (2012)
In 2012, Natco-Bayer Case marked India's first grant of a compulsory license. Bayer
Corporation, a German pharmaceutical giant, held the patent for "Nexavar," a drug used to
treat kidney cancer, with a high monthly cost of around ₹2.8 lakh. Natco Pharma, an Indian
company, sought a voluntary license from Bayer in 2010, which was denied. As a result,
Natco applied for a compulsory license, which was granted in 2012. This allowed Natco to
sell the drug at a significantly reduced price of ₹9,000 per month, making it accessible to a
wider public. The decision was upheld by the Intellectual Property Appellate Board (IPAB)
and set a precedent for access to affordable medication. Natco also paid Bayer a royalty of 6%
on sales, aligning with guidelines for equitable compensation.

2. Lee Pharma vs. AstraZeneca (2015).

Lee Pharma, an Indian pharmaceutical manufacturer, sought a compulsory license for
"Saxagliptin," a drug used for treating type-II diabetes. The drug, owned by AstraZeneca, had
few alternatives in India. Lee Pharma’s application was based on claims that the drug was not
adequately accessible to the public at reasonable prices. However, the Controller of Patents
rejected the application, stating that the grounds outlined under Section 84 of the Indian
Patents Act, such as availability and affordability, were not sufficiently proven. This case
highlighted the stringent criteria required for granting a compulsory license.

3. Bristol-Myers Squibb Holdings vs. BDR Pharmaceuticals (2020).

In Bristol-Myers Squibb Holdings vs. BDR Pharmaceuticals (2020), BDR Pharmaceuticals
sought a compulsory license for the leukemia drug Sprycel. The Delhi High Court ruled that
claims of evergreening do not justify a compulsory license. It emphasized that applicants
must first attempt to secure a voluntary license from the patent holder, highlighting that
compulsory licenses in India are granted only on substantial grounds after genuine efforts to
negotiate.

CRITERIA FOR FILING PATENT

Section 2(m) - Definition of Patent

Under the Patents Act, 1970, Section 2(m) provides the statutory definition of a patent. It
states: "Patent means a patent for any invention granted under this Act."
This definition tells that a patent is an official grant for a new and useful invention, which is
recognized by the government under the provisions of the Act. An invention eligible for a
patent must meet specific criteria, including novelty, inventiveness, and industrial
applicability.

INVENTION
Section 2(1)(j) of the Indian Patents Act, 1970: Definition of 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.

NEW INVENTION
Section 2(1)(j) of the Indian Patents Act, 1970: Definition of New Invention
"New invention" means any invention or technology which has not been anticipated by
publication in any document or used in the country or elsewhere in the world before the date
of filing of a patent application with complete specification. In other words, the subject matter
must not have fallen into the public domain or formed part of the state of the art.

In F. Hoffmann-La Roche Ltd. v. Cipla Ltd., the court noted that the term "new invention" is
not explicitly used anywhere in the Act. However, the relevance of this provision lies in its
reflection of the Legislature's intention. When read in conjunction with Section 2(1)(j)
(definition of invention) and Section 2(1)(i), it clarifies what is considered not new under the
Act. Section 2(1)(i) specifies that an invention or technology must not have been previously
made or used in India, detailing two categories: either it must not have been disclosed in a
'document' or practiced in a way that would anticipate the invention, rendering it non-novel.

To be patentable, an invention must either be new or novel, resulting in a new product or

process involving an inventive step, and it should be capable of industrial application.

NEW OR NOVEL
The Patents Act, 1970 requires an invention to be new in the sense that, on the date of filing a
patent application, it should not form part of the state of the art. The "state of the art"
comprises all matter made available to the public before the priority date of the invention
through written or oral descriptions, by use, or in any other manner. This means that for an
invention to be patentable, it should not be found in any matter, whether a product, process, or
information regarding either, that has been made available to the public anywhere in the
world.

In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, the Supreme Court
emphasized the fundamental principle of patent law, stating that a patent is granted only for
an invention that must be new and useful, possessing both novelty and utility.

In Novartis AG v. Union of India, the Supreme Court held that a "new product" in chemicals,
particularly pharmaceuticals, does not necessarily imply something entirely new or unfamiliar.
It may instead refer to something "different from a recent previous" version or "one regarded
as better than what went before."

INVENTIVE STEP
The term "inventive step" refers to a feature of an invention that demonstrates technical
advancement compared to existing knowledge or possesses economic significance, or both,
thereby making the invention non-obvious to a person skilled in the art. To satisfy the
inventive step criterion, the patentee must demonstrate that the invention includes either
technical advancement, economic significance, or both.

The definition of "inventive step" was amended in 2002 to clarify that it must make the
invention not obvious to a person skilled in the art. Further amendments in 2005 defined it
more comprehensively as "a feature of an invention that involves technical advance as
compared to the existing knowledge or has economic significance or both and that makes the
invention not obvious to a person skilled in the art." This definition highlights that the
inventive step must not be something readily discernible to an unimaginative person skilled in
the art, nor should it be a mere reiteration of what was published in prior art.
In CTR Manufacturing Industries Limited v. Sergi Transformer Explosion Prevention
Technologies Pvt. Ltd., the court emphasized that the degree of inventiveness could yield
dramatically significant results from slight alterations or improvements, showcasing the
ingenuity involved.

For an invention to be patentable, it must exhibit the characteristics of novelty, non-

obviousness, and enablement. Among these, enablement must be present for the patent to be
valid. A "person skilled in the art" is assumed to possess relevant knowledge and skills in the
field. This perspective is crucial when assessing whether prior patents enable the skilled
person to replicate the invention. If a skilled individual can achieve the same results using
prior art, the invention is considered anticipated and, therefore, obvious.

NON-OBVIOUSNESS
To qualify for patent protection, an invention must be non-obvious. The essential elements of
novelty and inventive step depend on the specific facts of each case. A lack of an inventive
step implies that the invention is obvious.

In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, the Supreme Court
emphasized that the phrase "does not involve any inventive step," as stated in Section 26(1)(e)
of the Patents and Designs Act, 1911, along with its equivalent term "obvious," has special
significance in patent law. The determination of "obviousness" must be conducted strictly and
objectively. A critical inquiry was proposed: whether the alleged discovery deviates
significantly from prior knowledge such that it would not naturally occur to someone
contemplating the subject matter.

Another approach to assessing whether a document negates novelty or an inventive step is to

consider whether a competent draftsman (or engineer, as opposed to a mere artisan) with
common knowledge at the priority date, faced with the problem solved by the patentee and
without knowledge of the patented invention, would find the solution within the document.
Alternatively, the inquiry could be framed as follows: was it practically obvious to a skilled
worker, given the existing knowledge and literature available at the time of the patent, that
they would or should make the claimed invention?

In Graham v. John Deere Co., the U.S. Supreme Court laid out key factors for determining
obviousness:

⚫ The scope and content of prior art.

⚫ The differences between the prior art and the claims at issue.
⚫ The level of ordinary skill in the pertinent art.
⚫ Objective evidence of non oviousness.

Additionally, secondary considerations may be evaluated, such as:

Commercial success.
⚫ Long-felt but unresolved needs.
⚫ The failure of others to solve the problem.

CAPABLE OF INDUSTRIAL APPLICATION

For an invention to qualify for patent protection, it must be capable of industrial application.
This criterion ensures that the invention can be made or used in some kind of industry,
reflecting its practical utility.

In Endon v. Bicknell, the court clarified that mere usefulness is insufficient to support a patent.
The invention must demonstrate a capability for industrial application that goes beyond
theoretical or abstract utility.
The case of F. Hoffmann-La Roche Ltd. v. Cipla Ltd. further emphasizes this requirement.
The court noted that Section 2(1)(ac) of the Patents Act necessitates that an invention must
have commercial use or manifestation. Even if the alleged invention is not a final product, it
can still be patentable if it possesses some degree of commercial viability. This highlights that
the focus is not merely on the product itself, but rather on the physical substance created that
has the potential for practical and commercial application.

INFRINGEMENT AND REMEDIES

INFRINGEMENT-
Jurisdiction (Section 104)
Section 104 of the Patents Act, 1970 stipulates that a suit for patent infringement or for a
declaration of non-infringement must be filed in the District Court with jurisdiction to hear
the case. However, if the defendant raises a counterclaim for revocation of the patent, the
entire case must be transferred to the High Court.

Infringement of Patent
A patent is infringed when an individual or entity uses the patented invention without
authorization. Infringement can occur even if only a part of the invention is utilized, provided
that the part is new and significant, particularly in the case of combinations.
In F. Hoffmann-La Roche Ltd. v. Cipla Ltd., the court ruled that while the claims are critical,
the context and relationship between the variant and the patented claim are also vital for
determining infringement.

Burden of Proof
Section 104A allows courts to direct the defendant to prove that their process for obtaining a
product is distinct from the patented process. This provision shifts some burden to the
defendant, particularly when the patented subject matter is a process leading to a new product.
The plaintiff holds the general burden of proof to establish infringement, while the defendant
must show that their process does not infringe upon the patent.

Declaration as to Non-Infringement
Section 105 allows any person to seek a declaration that their use of a process or product does
not constitute infringement of a patent claim, provided they first request acknowledgment
from the patentee and receive no response. This section underscores that such a declaration
does not affect the validity of the patent claim. The costs for such declarations are usually
borne by the plaintiff unless the court decides otherwise. Importantly, the validity of the
patent cannot be challenged in a suit seeking this declaration, and such a suit does not imply
the patent's validity or invalidity.

Threats
Under Section 106, individuals threatened with patent infringement proceedings can sue for a
declaration that the threats are unjustifiable, seek an injunction against the threats, and claim
damages. The defendant must demonstrate that their actions would constitute an infringement
if completed, or else the plaintiff may receive the relief sought.
A mere notification of the existence of a patent is not considered a threat under this provision,
as established in Earles Utilities Ltd. v. Harrison, where a letter warning of potential legal
action was deemed insufficient to constitute a threat.

Defences in Suits for Infringement

Section 107 provides that any grounds for revocation of a patent, as enumerated in Section 64,
can be used as defenses in infringement suits. This duality allows defendants to contest
infringement claims using arguments that could also support a revocation claim.
Certain Acts Not to be Considered as Infringement
The Patents (Amendment) Act, 2002 introduced Section 107-A, which states that certain acts
are exempt from being considered patent infringement. Specifically, any act of making, using,
selling, or importing a patented invention for purposes related to developing information
required by regulatory bodies is not deemed infringement.

The doctrine of pith and marrow is a legal principle applied in patent law to determine
whether a new invention infringes on an existing patent. Instead of focusing solely on the
literal wording of the patent claims, this doctrine allows courts to assess the core or essence of
the patented invention. Here’s a more detailed explanation:

REMEDIES-
Reliefs in Suits for Infringement
Section 108 In a suit for patent infringement, the court can grant various reliefs including an
injunction, and at the plaintiff's option, either damages or an account of profits. The injunction
serves as a preventive remedy against both actual and threatened infringements.

Types of Injunctions
Injunctions in patent infringement cases can be temporary or permanent.
Temporary injunctions are granted to prevent immediate harm to the plaintiff while awaiting a
final decision. The test for these injunctions involves assessing whether the plaintiff has a
prima facie case, if they would suffer irreparable harm without the injunction, and the balance
of convenience between the parties. The landmark case American Cyanamid v. Ethicon it was
hel that the court must exercise caution, especially when the validity of the patent is
challenged, ensuring that the remedy does not unjustly favor wealthier plaintiffs over
defendants in precarious positions.

Principles for Granting Temporary Injunctions-

1. Plaintiff must prove that there is prima facie.
2. Balance of inconvenience
3. Irrepairable loss caused to the plaintiff

Ex Parte Interim Injunctions

When considering ex parte interim injunctions, courts must evaluate specific factors . The
Supreme Court outlined critical factors that influence the granting of ex parte injunctions,
including the likelihood of serious harm to the plaintiff, the timing of the plaintiff's notice of
infringement, and the need for utmost good faith in the application process.

Quia Timet Actions

The legal concept of quia timet, meaning "because he fears," allows plaintiffs to seek
injunctions against anticipated actions infringing their rights. In Bristol-Myers Squibb
Company v. Mr. J.D. Joshi, the court confirmed that a quia timet action could proceed based
on the apprehension of harm, underscoring the need for valid justification for interim relief.

Damages or Account of Profits

In patent infringement cases, plaintiffs can opt for either damages or an account of profits, but
these remedies are not cumulative. Damages aim to compensate the plaintiff for losses
suffered due to infringement, while an account of profits allows the plaintiff to claim profits
earned by the defendant from the unauthorized use of the plaintiff's invention. In Microsoft
Corporation v. K. Mayuri, the court articulated a method for calculating damages based on the
number of infringing articles sold and the corresponding royalty fees.
 APPLICATION OF PATENT

The Patents Act establishes a comprehensive procedure for granting patents to inventors,
allowing them to exploit their inventions for a period of 20 years.

Who Can Apply for a Patent? (SECTION 6)

⚫ True and First Inventor: The individual who first created the invention. If multiple
inventors have created the same invention independently and have not disclosed it, the
one who files the application first is recognized as the true and first inventor. Section
2(1)(y) clarifies that this does not include the first importer of the invention into India or
a person who first communicates the invention from outside India.

Case Law: In V.B. Mohammed Ibrahim v. Alfred Schafranek, the court ruled that a financing
partner who did not contribute inventive skill could not be deemed an inventor.

⚫ Assignee of the True and First Inventor: This includes any individual or entity to whom
the invention has been assigned, such as registered companies, research organizations,
educational institutes, or government bodies. The term "assignee" encompasses an
assignee of the assignee and the legal representative of a deceased assignee.

Valid Assignment: An invention assigned to a firm is valid, and thus, a firm can also apply for
a patent as an assignee.

⚫ Legal Representative of a Deceased Inventor: If a deceased person was entitled to make a

patent application just before their death, their legal representative can apply for the
patent, representing the estate of the deceased inventor.

⚫ Employee-Employer Relationship
Ownership of Inventions: Generally, inventions created by an employee during the course of
employment belong to the employer.

Employee Rights: However, if there is no specific contract or clear assignment, the employee
may retain rights to their invention, especially if it was created outside their normal duties or
with no specific assignment from the employer.

Case Law: In Worthington v. Moore, it was noted that an invention may belong to the
employee even if made during work hours and using the employer's materials.