SUCHITRA BAIPatent Department

Altacit Global, Chennai Office

In order to understand the patentability of various subject matter in India, a review of the history of patent protection in India is helpful. The Patents and Designs Act 1911 did not spell out any provisions for refusing patent applications, that in order to be patentable, subject matter was required to relate to a ‘manner of manufacture’ i.e., it must be a process or apparatus, or a product of manufacture, but it must suggest an act to be done or an operation to be performed by subjecting materials to manual, mechanical, chemical, electrical or the like operation.

There are some products and processes which are not patentable in India. They are classified into two categories in the patent act.

a. Those which are not inventions [Section 3] b. Inventions relating to Atomic Energy [Section 4]

An invention which is frivolous or which anything obvious contrary to well established natural laws;

In the case of Indian Vaccum Brake C. Ltd Vs. Laurd, it was held that merely making in one piece, articles made in two or more pieces is frivolous. Mere usefulness is not sufficient.

An invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;

The invention, the use of which is contrary to the law for the time being in force or us of which is prohibited is not patentable e.g. any device, apparatus or machine for thefts or committing or injuring human beings.

If the invention, the use of which is found to be injurious to public health are also not patentable e.g., Method of adulteration of food.

The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature;

Scientific theory is a statement about the natural world.

These theories themselves are not patentable no matter how radical or revolutionary insight they provide, but if they lead to practicable application in the process of manufacture of article or substance, may well be patentable.

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

Mere discovery of new property is not patentable invention

e.g., a mere discovery of a new property of the substance such as Aspirin for use of treatment of some other disease cannot be considered patentable in mere use of Aspirin for cardio-vascular disease,which was earlier used for analgesic purpose is not patentable.

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;

A mixture of sugar and some colorants in water to produce a

soft drink is a mere admixture resulting into aggregation of the properties.

A composition of two drugs i.e Paracetamol and Ibuprofen

for curing fever and pain or process of preparation thereof is not patentable for the reasons that the composition is mere admixture of two drug components resulting in aggregation of properties thereof.

The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

In Ram Pratap Vs. Bhabha Atomic Research Centre (1976), it was held that a mere juxtaposition of features already known before the priority date which have arbitrarily been chosen from among a number of different combinations which could be chosen was not a patentable invention.

Omitted, prior to omission it read as ‘a method or process of testing applicable during the

process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacturing’

A method agriculture or horticulture; In the case of N.V. Philips Gloeiammpenfabrieken’s

application it was held that ‘A method of producing a new form of a known plant even if it involved a modification of the conditions under which natural phenomena would pursue their inevitable course is not patentable’.

A method of producing mushroom plant and a method

for cultivation of an algae were held not patentable.

Any process for the medicinal, surgical, curative, prophylactic diagnostic therapeutic or other treatment of human being or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;

In Cunnynghame’s English Patent practice (1894), it was stated “The art of curing an illness cannot be said to be an art of manufacture.

In the case of ‘Oral Health Products Inc. [1977]’ A method of removing dental plague and caries from teeth and a method of preventing the formation of calculus were refused on the ground that they were claims for the medical treatment of human beings to cure or prevent disease.

Plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production of propagation of plants and animals;

Plants and animals, in whole or in their parts are

excluded from patent protection. Plant varieties are protected by a sui generis system under the protection of Plant Varieties and Farmer’s Right Act 2001.

A mathematical or business method or a computer program per se or algorithms;

Computer programmes are a set of instructions for controlling a

sequence of operations of a data processing system. It closely resembles a mathematical method. It may be expressed in various form e.g., a series of verbal statements, a flowchart, an algorithm, or other coded form and maybe presented in a form suitable for direct entry into a particular computer, or may require transcription into a different format (computer language). It may merely be written on paper or recorded on some machine readable medium such as magnetic tape or disc or optically scanned record, or it maybe permanently recorded in a control store forming part of a computer.

  In the case of The Computer Generation of Chinese Characters [1993]

it was held that A Computer programme for a method of storing, processing, displaying or printing Chinese characters was refused on the ground that the method claimed was not of a technical nature and was merely a method of performing mental acts.

A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

A mere scheme or rule or method of performing mental act or method of playing game;

Method of performing mental act or method of playing game or a

mere scheme or rule are as such excluded from Patentability, because they are considered as outcome of mere mental process.

E.g., a. Method of learning a language b. Method of playing chess c. Method of teaching d. Method of learning e. Method of operating a machine or equipment as per the set of

instructions.

A presentation of information; 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 example, a speech instruction means in the form of printed text where horizontal underlining indicated stress and vertical separating line divided the works into rhythmic groups is held not patentable.

In the matter of application No. 94/Cal/2002, the Controller held,

that patent system was meant for protecting only one kind of creativity, i.e., technological creativity and since the claimed invention related to business method and method of presenting information, it was not allowed.

Topography of integrated circuits; Topography of integrated circuits cannot be subject

matter of a patent protection. Topographies or lay out designs of integrated circuits

are governed by the Semiconductor Integrated Circuits Layout-Design Act 2000.

An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.

Inventions relating to Atomic Energy:

No Patent shall be granted in respect of an invention relating to atomic energy falling within subsection (1) of Section 20 of the Atomic Energy Act, 1962 (33 of 1962)

No Patent shall be granted for the invention which in the opinion of Central Government is useful for or related to the production, control, use or disposal of atomic energy or prospecting mining extraction, productions, physical and chemical treatment fabrication, enrichment, canning or use of any prescribed substance or radioactive substance or the insuring of safety in atomic energy operation.

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