Patentability criteria
Every invention has to pass various tests and fall under the category of
inventions that can be patented in India. The 3 main tests are novelty, non-
obviousness and utility. There are certain requirements that need to be
fulfilled in order to get a patent for an invention.
Requirements or principles of Patent Law
To get a product patented, it has to fulfil the following requirements, which
also serve as the principles of patent law in India. These are:
An invention must be new.
It must involve an inventive step.
Capable of being used in industries i.e. industrial application.
It must not fall into the category of exceptions or subjects that are
not patentable.
The following criteria determine what can be patented in India:
Novelty or newness
The invention must be new and not similar to any other inventions or existing
products. According to Section 2(l) of the Patents (Amendment) Act, 2005
‘new invention’ means an invention that has not been anticipated by prior
publication and does not fall into the public domain. There must be no prior
publication of the invention. However, a mere discovery does not amount to
an invention. The two criteria for granting patents, i.e., novelty and utility,
were recognized as important in the case of Bishwanath Prasad Radhey
Shyam v. Hindustan Metal Industries (1979). It was observed in the case
of Gopal Glass Works Ltd. v. Assistant Controller of Patents (2005), that for an
invention to be patented it must be new and original. Novelty in itself is not a
complete criterion. The product or invention must be sufficiently original as
well.
Non-obviousness or inventive step
According to Section 2(1)(j) of the Indian Patents Act, 1970, any product or
process that involves an inventive step and is capable of being used in the
industry is called an invention. This definition makes it clear that the
invention must have an inventive step and it must not be known to any
skilled person in that particular field. Section 2(1) (ja) of the Act defines
‘inventive step’. The concept of inventive step was introduced in India in the
case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries
(1979). It also reiterated the four tests of obviousness. These are:
A skilled person must identify the inventive step in the form of prior
use, art or knowledge.
He must be able to tell the difference between the subject matter
and the invention.
Consideration must be given to observing the differences.
There must be a degree of invention.
Usefulness or utility/ Industrial application
This is another important criterion for granting patents. An invention must be
useful and have an industrial application besides being new and non-obvious.
In the case of Cipla Ltd. v. F Hoffmann-La Roche Ltd. (2015), the Court
observed that according to the definitions of ‘invention’ and ‘capable of
industrial application’ under the Act, an invention must have a commercial
use so that it can be utilized in the industries. In the case of Indian Vacuum
Brake Co. Ltd. E.S. Luard (1925), the Court observed that the term ‘utility’
has not been used in an abstract sense in the Act. In order to qualify for a
patent, an invention must have some utility. Mere usefulness is not enough.
Non-patentable inventions
Sections 3 and 4 of the Indian Patents Act of 1970 provide the list of
inventions that are not patentable. These are:
Frivolous or fabricated inventions.
An invention that violates public morality or causes a serious threat
and prejudice to human, animal or plant life.
Mere discovery of a scientific principle or a theory that is abstract.
Mere discovery of a new substance.
An invention which is done by the mere arrangement, re-
arrangement or duplication of existing knowledge or devices.
A method of agriculture or horticulture.
Any process of treatment of humans, animals, and plants that may
be medicinal, therapeutic, surgical, diagnostic, curative, etc.
A method of mathematics, business or algorithms.
Any literary, dramatic or artistic work.
Any presentation of information or process.
Topography.
An invention that is a result of the duplication of traditional
knowledge.
