Vijay Kumar M

As per our earlier classes the statue (Patent Act 1970) has defined what can be patentable and what cannot;

Section 2(1) (j) defines what is an Invention and the entire patent Act uses this term Invention for grant of patent or any other purpose in the Act.

Invention Means a new product or process involving an inventive step and capable of Industrial application.

Patents Act 1970Patentable inventionsany product or process which is :

novel not obvious to a person skilled in the art capable of industrial application

The Act also provide what cannot be patentable Under Section 3 and 5.

Invention mustInvention must relates to a ProcessProcess or ProductProduct

or both be new (Novel) involves an inventive stepinventive step be Capable of industrial industrial

applicationapplication not fall under Section 3 and 4Section 3 and 4

It has been inserted into the patent Act, 1970 through patents amendment Act, 2002.

It was introduced to comply with TRIPs regulations and provide a proper definition to the term Invention which is paramount importance for the patent law.

Anti-discrimination provisions [Art. 27.1] No discrimination in the availability or enjoyment of patent

rights on the basis of field of technology, place of invention or location of manufacture of product

An attempt to harmonize the Patentable subject matter through out the member countries of TRIPs.

Provided flexibilities to member countries on certain subjects like:- Plant/animal exception in 27.3(b), but microorganisms

must be eligible Exception for surgical/diagnostic/therapeutic methods

practiced on the human/animal body [27.2] Exclusions where commercialization/use of technology

prohibited as being necessary to protect public order/morality/protection of environment [note: cannot “not” patent but then allow use of the prohibited technology]

Each Country law has its own definition. Some countries don’t grant (Netherlands, Switzerland)

Legislatures have difficulty generalising (often resorting to lists)

Exceptions vary (public policy/morals, medicines, finance, food, scientific principles, theoretical developments)

“(1) Every new discovery or invention, in all departments of industry, confers on its author…the exclusive right of working for his own profit the said discovery or invention…

(2) The following shall be considered as new inventions or discoveries:-

The invention of new industrial products; The invention of new methods, or the new

application of known methods, or obtaining an industrial product or result.

(3) The following shall not be patentable:- Pharmaceutical compositions or medicines of

all kind… Schemes and combinations relating to credit

and finance

(1) Exclusive privileges may be granted …for every new discovery or invention having for its object – a. A new product of industry; or b. A new means of production; or c. A new method of production

(2) No privileges can be granted for preparations of food, beverages, and medicines, nor for discoveries, inventions or improvements which cannot be worked for reasons of public health, morals or safety, or as being contrary to the general interest of the state, according to existing regulations

(5) Scientific principles, or purely scientific theorems, cannot be patented…

Food, beverages (Austria; Germany; Italy (art 37); Luxembourg; Sweden) Pharmaceutical; medicines (Argentine Republic; Austria; Finland; France;

Germany; Italy; Luxembourg; Spain; Sweden; Turkey; Venezuela) Substances produced by chemical processes (Germany; Luxembourg Financial schemes (Argentine Republic; France; Mauritius; Spain; Turkey;

Venezuela) Those of a mere theoretical nature; Inentions not relating to the

manufacture of material objects; Scientific principles or purely scientific theorems (Argentine Republic; Brazil; France (art 30); Italy; Turkey; Venezuela; Italy; Austria; Canada (s.6) ; Finland; Russia (art 80); Spain

Use of natural products (Spain) Contrary to morals (Argentine Republic; Brazil; Colombia; Finland; France;

Germany; Italy; Luxembourg; Mexico; Turkey; Venezuela) Contrary to laws (Argentine Republic; Austria; Brazil; British Guiana;

Colombia; Finland; France; Germany; Italy; Luxembourg; Mexico; Portugal; Sweden; Turkey; Venezuela)

Contrary to public health or safety (Austria; Brazil; Colombia (art 8) ; Finland; France; Italy; Mexico; Portugal (art 632); Russia (art 87); Turkey; Venezuela)

“Prejudicial or Inconvenient…” (British Guiana; Ceylon (s.25); India (s. 16); Trinidad; GB; Mauritius (s. 17); New Zealand)

Implements of war (Russia) Detriment to Government revenues (Russia )

Subject to the provisions of paras 2 & 3, patents

shall be available for any inventions, whether

products or processes, in all fields of technology,

provided that they are new, involve an inventive

step and are capable of industrial application.

Subject to para 4 of Art 65, para 8 of Art 70 and para

3 of this Article, patents shall be available and

patent rights enjoyable without discrimination as

to the place of invention, the field of

technology and whether products are

imported or locally produced

US, s.101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, …

Japan, Art 2(1): ‘a highly advanced creation of technical ideas by which the law of nature is utilised’

Mexico Art. 15: ‘Any human creation that allows matter or energy existing in nature to be transformed for utilization by man for the satisfaction of his specific needs shall be considered an invention.’

Bangui Accord. Article 1 of Annex 1 ‘invention means an idea that permits a specific problem in the field of technology to be solved in practice’

US (Judicial (Case law)): laws of nature, physical phenomena, abstract ideas (Chakrabarty/Bilski)

EPC, Art 52: discoveries, scientific theories, mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; presentation of information;

Eurasian Patent Convention 1994: (EPC+) “ methods of economic organization and management”, “symbols, schedules and rules”, “algorithms”; “topographies of integrated circuits” and “projects and plans for structures and buildings and for land development” and “solutions concerning solely the outward appearance of manufactured goods and aimed at satisfying aesthetic requirements.”

TRIPS – Article 27TRIPS – Article 27Patentable Subject Matter1. Subject to the provisions of paragraphs 2 and 3, patents shall

be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.

[1] Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.

2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.

TRIPS – Article 27TRIPS – Article 27Patentable Subject Matter 3. Members may also exclude from patentability:(a) diagnostic, therapeutic and surgical methods for the

treatment of humans or animals;(b) plants and animals other than micro-organisms, and

essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement.

[1] For the purposes of this Article, the terms "inventive step" and "capable of industrial application" may be deemed by a Member to be synonymous with the terms "non-obvious" and "useful" respectively.

(a)Frivolous, Contrary To Natural LawsExamples 1) Examples 1) Machine that gives more than 100% performance 2)

Perpetual machine

(b) Contrary To Public Order Or Morality, Prejudice To Human, Animal Or Plant Life Or Health Or To The Environment;

Examples 1) Examples 1) Gambling machine, 2) Device for house-breaking , 3) Biological warfare material or device, 4) weapons of mass destruction 5)Terminator gene technology, 6)Embryonic stem cell

(c) Mere Discovery Of Scientific Principle, Abstract Theory, Living

Thing Or Non- living Substances Examples:

• Newton’s Laws • Superconducting Phenomenon as such • Property of certain material to withstand mechanical shock• Discovery of micro-organism • Discovery of natural gas or a mineral

(d) Mere Discovery Of New Form, New Property, New Use Of A Known Process, Machine Or Apparatus (EFFICACY) (e) Mere Admixture (SYNERGY)

(f) Mere Arrangement, Re-arrangement, Duplication of known devices.

(g) Omitted (Testing Methods)

(h) Method Of Agriculture Or Horticulture;

(i) Method Of Treatment.

(j) Plants, Animals, Including Seeds Varieties, Species, Biological Processes.

Exception: Microorganisms

(k) Mathematical Or Business Method Or A Computer Program Per Se Or

Algorithms;

(l) Literary, Dramatic, Musical Or Artistic Work, Other Aesthetic Work

(m) Mere Scheme, Rule, Method Of Performing Mental Act, Playing Game;

(n) A Presentation Of Information;

(o) Topography Of Integrated Circuits;

(p) Traditional Knowledge

That it has not been anticipated by publication in any document any where in the world or

used in any country or prior claimed in an application for patent in

India or form part of the knowledge, oral or

otherwise, available within any local or Indigenous community in India or elsewhere before the date of filing of patent application or date of priority, that is, the subject matter has not fallen in the public domain or that it does not form part of the state of the art.

• In re Nuijten - Electrical signals deemed not patentable

• In re Bilski - Managing weather risk in commodity trading

• In re Comiskey - Mandatory arbitration of legal documents – Held patentable subject matter