Acknowledgement

I would like to express my sincere gratitude to Abhishek Rai Sir for giving me the
opportunity to work on the topic of Ingredients of Invetion as per The Patent Act
1970.

I would like to thanks God and my parents for their blessings last but not the least
I am thankful to my friends for their support.
 Abstract

This chapter is aimed at providing the basic information in relation to patent for the ease of the
reader, who would like to refer to the concept, definitions, justifications, basic principles and
essentials of patent. This chapter sets the background and helps to understand the research in
light of well known concepts and defined principles of patent law that have been dealt herein
below in sufficient length.
 Table of Cases

Chiron Corporation v. Organon Teknika Ltd (1995) FSR 325

Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries AIR 1982 SC 1444
Raj Prakash v. Mangat Ram Chowdhary AIR 1978 Del 1; MANU/DE/0152/1977
Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning a Corporation v.
Unichem Laboratories and Ors MANU/MH/0064/1969

Windsurfing International Inc v. Tabur Marine (Great Britain) Ltd[1985] RPC 59

Monsanto company v. Coramandal Indag Products (P) Ltd(1986) 1 SCC 642; 1986 PTC 195 SC

Canadian General Electric Co. Ltd. v. Fada Radio Ltd AIR 1930 PC I; (1930) 47 RPC 69(PC)

Gillette Industries Ltd. v. Yeshwant Bro. AIR 1938 Bom. 347

M/s. Bishwanath Prasad Radhey Shyam v. M/s. Hindustan Metal

IndustriesMANU/SC/0255/1978

Graham v. John Deere Co383,US 1 (1996) 1142

 Contents
Serial Name of Headings Page no.
no.

1 Introduction

2 Definition of Patent

3 Subject Matter of Patent; Invention

4 Conclusion

5 Reference
 1. Introduction

The term patent has its origin in the Latin term “Litterae Patentes”. The expression meant grant
of some privileges by the government of the country to one or more individuals. So, a patent is
exclusive right granted by the government to a person who invented or manufactured an article
according to the invented process.

Patent law is primarily concerned with balancing private and public interests involved in the
process of economic development. Patent protection is considered to be a necessary precondition
for private investment in research and development activities, which is necessary for the growth
of pharmaceutical sector. At times excessive patent protection may adversely affect public
interest involved in promotion of public health, safety and welfare of the people.
 2. Definition of Patent

"Patent" means a patent for any invention granted under this Act;1

The Patent Act 1970 does not define the term “patent”. A Patent is a statutory right for an
invention granted for a limited period of time to the patentee by the Government, in exchange
of full disclosure of his invention for excluding others, from making, using, selling,
importing the patented product or process for producing that product for those purposes
without his consent. Patent is a grant for an invention by the Government to the inventor in
exchange for full disclosure of the invention. A patent is an exclusive right granted by law to
applicants / assignees to make use of and exploit their inventions for a limited period of time
(generally 20 years from filing). The patent holder has the legal right to exclude others from
commercially exploiting his invention for the duration of this period. In return for exclusive
rights, the applicant is obliged to disclose the invention to the public in a manner that enables
others, skilled in the art, to replicate the invention. The patent system is designed to balance
the interests of applicants / assignees (exclusive rights) and the interests of society
(disclosure of invention).

Objectives of Patent Law:

 Patent law promotes inventiveness and ensures adequate returns to investments made.
 Patent system is required to encourage Research and Development of new technology
and industry.
 It is important for technological, industrial and economic development of a country.
 Patent is granted to patentee for conferring a monopoly right to the inventor for a
limited period – to own, use or sell his invention.
 Providing of exclusive rights to an inventor in turn stimulates technical progress,
industrial growth and improves quality of life of people.

Arguments in favour of patent system:

1. The contract theory: Temporary protection granted in reward for knowledge of new
inventions.

1
Section 2(1)(m) in The Patents Act, 1970
 2. The reward theory: Inventors should be rewarded for making useful inventions and the law
must be used to guarantee this reward so that inventors can receive sufficient recompense for
their ingenuity.

3. The incentive theory: By constructing a framework whereby invention is rewarded, this

will act as an incentive to make new inventions and to invest the necessary time and capital.
This is a forward looking approach contrasted to the latter which is retrospective.

4. Natural Law/Moral Rights Theory: Individuals have a right to property in their own ideas
and this right should be protected from being usurped or stolen by others.

Chiron Corporation v. Organon Teknika Ltd.2 In above case, Aldous J, put the justification
for the patent system in very pragmatic terms, saying that nearly every country had chosen to
adopt a patent system because:

“…it is generally accepted that the opportunity of acquiring monopoly rights in an invention
stimulates technical progress in at least four ways. First it encourages research and invention;
secondly, it induces an inventor to disclose his discoveries instead of keeping them a secret;
thirdly, it offers a reward for the expense of developing inventions to the state at which they
are commercially practical and, fourthly, it provides an inducement to invest capital in new
lines of production which might not appear profitable if many competing producers
embarked on them simultaneously…It is inherent in any patent system that a patentee will
acquire a monopoly giving him a right to restrict competition and also enabling him to put up
or at least maintain prices. That affects the public and is contrary to the public interest, but it
is the recognized price that has been accepted to be necessary to secure the advantages to
which I have referred.”

The above mentioned exclusive right to use as well as to sell the invention is granted to such
inventor, so as to fulfill the objective of enactment of the Patents Act, 1970 which is also
observed by the Hon’ble Supreme Court in the case of Bishwanath Prasad Radhey Shyam v.
Hindustan Metal Industries3, i.e to encourage Scientific research, new technology and
industrial progress. The grant of such exclusive right to the inventor for a limited period of

2
(1995) FSR 325
3
AIR 1982 SC 1444
time to use and sell his invention for monetary gain encourages the common masses to make
new inventions for the benefit of the country and the society.

The grant of such a patent to the inventor of any invention is only for a fixed or limited
period of time and thus after the expiry of such period, the patented invention passes on to
the public domain.

Now, since a patent gives an exclusive right to the person to do whatever he wants to do with
his invention for his own benefit to the exclusion of others for a particular period of time
,therefore it is necessary to have a particular criteria to judge whether a particular invention
by any person should be patented or not. Therefore, it is necessary to observe that all
inventions are not patentable and thus an invention can only be patented when it fulfills the
criteria for patentability as per the law.

Although the Patentability Criteria differs from country to country depending on the law of
the land, there exists some commonality between them. In order to be patentable, an
invention must be novel, have utility, and differ from what skilled users might expect. These
standard requirements are given different shapes by the legislative and judicial systems of
different countries.

3. Subject Matter of Patent;Invention

Definition of Invention As patent is granted for invention, it is pertinent to understand the

meaning of invention. Prior to the amendment of 2002, the old definition of “invention” read
as below:

‘Invention’ means any new and useful

 art, process, method, or manner of manufacture,

 Machine, apparatus or other article, and
 Substance produced by manufacture and includes

any new and useful improvement of any of them, and an alleged invention.
This definition is done away with and the new definition under Section 2 (1) (j) of Patents
Act, 1970 as amended by Amendment Act of 2002 defines ‘Invention’ to mean “a new
product or process involving an inventive step and capable of industrial application.” In
accordance with new definition of ‘invention’, a patent can be granted to any

 New product or process

 Involving an inventive step and
 Capable of industrial application

A patent will be granted for an invention if it satisfies the required legal conditions. Legal
Conditions can mean substantive criteria (novelty, non-obviousness, utility and patentable
subject matter) or formal criteria (disclosure and other procedural requirements under patent
law). Usually Patentability refers to the substantive conditions such as novelty, non-
obviousness and utility, and does not refer to the formal conditions such as sufficiency of
disclosure, unity of invention or the best mode requirement. The substantive criteria for
patentability of an invention are:

1. Novelty - That the invention must be novel or new as compared to the state of the art
existing before the priority date (first claim made for the invention by filing for a patent in a
country)

2. Non-obvious – That the invention must be non –obvious (terminology used in US patent
law) or involve an inventive step (terminology used in TRIPS Agreement, European Patent
Law). The non-obvious criterion means that the invention must not be obvious to a person
skilled in the art to which invention relates.

3. Usefulness or Utility - That the invention must be useful (terminology used in US) or
capable of industrial application (terminology used in TRIPS Agreement, European Patent
Law, Indian Patent Law)

4. Patentable Subject Matter - That the invention should be of patentable subject matter
that is the kind of subject matter that is eligible for patent protection under the patent laws of
a country.
 The above mentioned first three criteria that is Novelty, non-obviousness and utility are
discussed below at length as understood in the jurisdictions of India, United Kingdom and
United States.

Raj Prakash v. Mangat Ram Chowdhary4 While considering the meaning of ‘invention’ the
Court held that “invention is to find out or discover something not found or discovered by
anyone before and it is not necessary that the invention should be anything complicated and
the essential thing is that the inventor was the first one to adopt it and the principle therefore
is that every simple invention that is claimed, so long as it is something novel or new, would
be an invention and the claims and the specifications have to be read in that light and a new
invention may consist of a new combination of all integers so as to produce a new or
important result or may consist of altogether new integers and the claims for anticipation by
the defendant has to be either by prior user or by prior publication”. Improvements The
definition of invention includes within its scope any new and useful improvement of any
manufacture, article or substance whether patented or otherwise. But the improvement in
order to be patentable must independently satisfy the test of invention. Where the
improvement relates to a subsisting patent in the favour of the same person, it can be
patented as Patent of Addition.

The basic criteria or essentials for grant of patent in India are that the invention (product or
Process) must be novel, involve an inventive step, be capable of industrial application, not
fall within the scope of section 3 and section 4 and fulfill other procedural requirements laid
down under the Patent Act, 1970.

Concept of New product or process; Novelty

In the Patents Act, 1970 we do not find the definition of expression “new product or
process”. However, the definition of “new invention” stated under Section 2 (1) (l) casts
some light over the concept of newness or criteria of novelty of product or process. The
expression “new invention” as defined in Section 2 (1) (l) 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 patent application with

4
AIR 1978 Del 1; MANU/DE/0152/1977
complete specification, i.e., the subject matter has not fallen in public domain or that it does
not form part of the state of the art”.

Examples of product invention

Typewriter, sewing machine, mobile phone, helicopter, sulfa drugs are few of the examples
which can be called as product invention.

Examples of process invention

Process for chrome plating, the process of making synthetic diamonds, processes for
vulcanizing rubber, smelting ore, tanning and dyeing.

For an invention, whether product or process, to be patented the first essential criteria is that
it has to be new, that is satisfying the feature of novelty. The invention will be considered to
satisfy ‘novelty’ if it is not anticipated by prior knowledge in public domain either by way of
prior publication anywhere in the world or by prior use in India or by prior claim in India on
the date of filing of patent application or priority date. Newness depends upon the State of
prior art, that is existing knowledge and similar invention already known in the particular
technology field. Thus there would be no novelty in an invention if there is prior publication
or prior use of an identical invention. Novelty is always ascertained in the light of a single
prior art reference and various prior art references cannot be combined. In order to negate
novelty of an invention, all elements of an invention must be present in the prior art
reference. For example, if a publication provides details of a chair made of wood and if a
person 'A' files for a patent over an invention comprising of a wooden chair with wheels, the
invention would be novel in the light of the prior art reference. Because, all the elements of
the invention are not present in the publication.

Although the term ‘state of the art’ has not been defined under the Patents Act, the following
general principles are applied by the Patent Office to determine the novelty of an invention
during the examination procedure by applying provisions of section 13, read with the
provisions of sections 29 to 34 :
 An invention is not considered to be novel –

(a) If it has been anticipated by publication before the date of filing of the application in any
of the specifications filed in pursuance of application for patent in India on or after 1st
January, 1912.

(b) if it has been anticipated by publication made before the date of filing or the date of
priority of the application in any of the documents in any country; or

(c) If it has been claimed in any claim of any other complete specification filed in India,
which was filed before the date of application though published after the date of that
application.

The Indian Patent Act provides a list of non-exhaustive circumstances that will anticipate an
invention and negate its novelty. Some of such circumstances are:

• Prior Publication – An invention will not be considered novel if it is anticipated by a

publication of the patent application of the invention. In the case of Farbewerke Hoechst
Aktiengesellschaft Vormals Meister Lucius & Bruning a Corporation v. Unichem
Laboratories and Ors5. it was observed that a prior publication will anticipate an invention
only if it contains the whole of the invention impugned, that is, all the features of the
invention.

• Public Knowledge and Public Use – Public knowledge about the invention or Public Use of
an invention before the filing date of the patent application will anticipate the invention and
negate its novelty.

In Windsurfing International Inc v. Tabur Marine (Great Britain) Ltd6., the Court of
Appeal held that a 12-year old boy, who built a sailboard and used it in public for a few
weekends at a caravan site at Hayland Island in Hampshire, had effectively anticipated a later
patent for a sailboard which was declared invalid for want of novelty (and also because it
lacked an inventive step)

5
MANU/MH/0064/1969
6
[1985] RPC 59
 The Turmeric Case

Two US based Indians Suman K Das and Hari Har P. Cohly were granted a US Patent
5,40,504 on March 28, 1995 on “Use of Turmeric in wound healing”. The patent was
assigned to University of Mississippi Medical Centre, USA. This patent claimed the
administration of an effective amount of turmeric through local and oral route to enhance the
wound healing process, as a novel finding. Any patent, before it is granted has to fulfill the
basic requirements of novelty, non-obviousness and utility. Thus, if the claims have been
covered by relevant published art, then the patent becomes invalid. Council of Scientific and
Industrial Research (CSIR) challenged this patent and filed a formal request for re-
examination at USPTO on 28th October 1996. CSIR could locate 32 references (some of
them being more than one hundred years old and in Sanskrit, Urdu and Hindi), which showed
that this finding was well known in India prior to filing of this patent. During the re-
examination all the claims of the patent were rejected by USPTO. Thus the turmeric patent
was revoked and CSIR were successful in challenging the patent based on traditional
knowledge on ground of Novelty.

Monsanto company v. Coramandal Indag Products (P) Ltd7.

In this case, it was held that the invention was publicly known since its formula was
published in the report of the International Rice Research Institute in the year 1968 and its
common name Butachlor was published in the same report in the year 1969.

Invention must involve an inventive step:

The term ‘inventive step’ means a feature of an invention that involves technical advance as
compared to the existing knowledge or having economic significance or both and that makes
the invention not obvious to a person skilled in the art.8

This criterion is also commonly known as the non-obviousness criteria. However, the present
Patent Act has named this criterion as provided in the TRIPS Agreement.9

7
(1986) 1 SCC 642; 1986 PTC 195 SC
8
Section 2 (1) (ja) of the Patent Act, 1970 as amended by the Patents (Amendment) Act, 2005, w.e.f. 1-1-2005.
Prior to 2005, inventive step was defined to mean a feature that makes the invention not obvious to a person
skilled in the art.
 As per the section, an invention will have inventive step only if it satisfies two conditions:

(i) The invention should be technically advanced in the light of prior art or should have
economic significance; and

(ii) The invention must be not obvious to a person skilled in the art

The expressions ‘technically advanced’ or ‘economic significance’ are not explained

anywhere in the Act, however, a lot is explained in the Draft Manual of Patent Practice and
Procedure, 200848 of the Indian Patent Office.

In Canadian General Electric Co. Ltd. v. Fada Radio Ltd.10, the Court observed that an
invention which consists of a small inventive step but having regard to the conditions of the
art, constitute a step forward, be good subject matter for a patent. In Gillette Industries Ltd.
v. Yeshwant Bros.11, the Court held that mere simplicity was not necessarily an objection to
the subject matter of an invention, though matters of ordinary skilled designing or mere
workshop improvements were not inventions. In simple words, when the invention is just an
obvious extension of prior art, the invention lacks inventive step.

In simple words, when the invention is just an obvious extension of prior art, the invention
lacks inventive step.

M/s. Bishwanath Prasad Radhey Shyam v. M/s. Hindustan Metal Industries,12

In this case, the Supreme Court laid down the following criteria for assessing inventive step.
“It is important that in order to be patentable an improvement on something known before or
a combination of different matters already known, should be something more than a mere
workshop improvement; and must independently satisfy the test of invention or an ‘inventive
step’. To be patentable the improvement or the combination must produce a new result, or a
new article or a better or cheaper article than before. The combination of old known integers
may be so combined that by their working interrelation they produce a new process or

9
See Article 27 of TRIPS Agreement
10
AIR 1930 PC I; (1930) 47 RPC 69(PC)
11
AIR 1938 Bom. 347
12
MANU/SC/0255/1978
 improved result. Mere collection of more than one integers or things, not involving the
exercise of any inventive faculty, does not qualify for the grant of a patent.”

The term "obvious" means that the invention does not go beyond the normal progress of
technology but merely follows plainly or logically from the prior art, i.e. something which
does not involve the exercise of any skill or ability beyond that to be expected of the person
skilled in the art. For this purpose a person skilled in the art is presumed to be an ordinary
practitioner aware of what was general common knowledge in the relevant art at the relevant
date. In some cases the person skilled in the art may be thought of as a group or team of
persons rather than as a single person. Inventive step is the toughest and ambiguous
patentability requirement.

In the case of Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd13, the
Court of Appeal held that the question of obviousness “has to be answered, not by looking
with the benefit of hindsight at what is known now and what was known at the priority date
and asking whether the former flows naturally and obviously from the latter, but by
hypothesizing what would have been obvious at the priority date to a person skilled in the art
to which the patent in suit relates”. The Court of Appeal (Oliver, L.J.) identified four steps
which should be taken in answering the question of obviousness. They are:

(i) To identify “the inventive concept” in the specification

(ii) To assume the mantle of the normally skilled but unimaginative addressee in the state of
the art, who has the common general knowledge of the art in question, as at the priority date.

(iii) To identify the differences (if any) between

(a) the matter cited as being “known or used” at the priority date; and

(b) the alleged invention

(iv) To ask, whether viewed without any knowledge of the alleged invention, those
differences constitute steps which would have been obvious to the skilled man or whether
they require any degree of invention.

13
[1985] RPC 59 (CA)
 In Graham v. John Deere Co14. the U.S. Supreme court laid certain factors to be considered
to find out whether the invention was obvious or not. The court observed that to determine
obviousness, courts should consider:

1) The scope and content of prior art

2) The difference between the prior art and the claim at issue, and
3) The levels of ordinary skill in the pertinent art.

In addition, courts may use secondary consideration such as

a) The commercial success of the invention;

b) Whether the invention satisfies long felt unsolved needs in the industry;
c) The failure of others to solve the problem at hand; and
d) Unexpected result-before reaching a conclusion on obviousness.

Invention must be Capable of industrial application:

Section 2(1)(ac) in The Patents Act, 1970

3
[(ac) "capable of industrial application", in relation to an invention, means that the
invention is capable of being made or used in an industry;

Capable of industrial application, in relation to an invention, means that the invention is

capable of being made or used in an industry. Ordinarily, "Industry" is taken in its broad
sense as including any useful and practical, as distinct from intellectual or aesthetic activity.
It does not necessarily imply the use of a machine or the manufacture of a product and covers
such thing as a process for dispersing fog or a process of converting energy from one form to
another. An invention would satisfy the requirement of ‘capable of industrial application’ if it
can be made a number of times, and can be used for at least one purpose in any industry. For
example, a pen, which can be replicated, would be industrially applicable because it can be
used in the education industry. The pen would not be industrially applicable if the same pen
cannot be manufactured repeatedly.

14
383,US 1 (1996) 1142
Invention must not fall within the scope of Section 3 and Section 4

The Indian Patent Act, 1970 in its Chapter II titled “Inventions not Patentable” in one part
lists out items those are not inventions within the meaning of Act and in the other part states
that no patent shall be granted in respect of an invention relating to atomic energy. Some
invention in spite of being new, non-obviousness and useful cannot be patented under the
Act. Under Section 3 and 4 of the Act, certain subject matters are statutorily labelled as
“inventions not patentable”. They are not entitled to a patent at the threshold.
4. Conclusion

As far as India is concerned ,it can authoritatively be said that though it is having a quite
sensible Patentability Criteria for patenting the inventions in any field of art, which are New
,Useful as well as Non-Obvious (to the person skilled in that Field of Art to which the
Invention relates) , but at the same time it shall also be remembered that the Patent Laws in
India which were originally enacted in 1970, needs to be further amended as far as the field
of Medicines is concerned because the Patent system in India does not affect the rich and the
elite class of people but it does affect the availability and affordability of medicines for the
poor people who in the developing country like India are caught in a vicious circle wherein
the Poor health leads to poverty, and poverty in its turn breeds poor health.
 References

Websites:

http://www.talwaradvocates.com/landmark-judgements-patent-law/

http://nopr.niscair.res.in/bitstream/123456789/19550/1/JIPR%203(2)%2059-67.pdf

http://www.legalserviceindia.com/article/l300-Patentability-Criteria.html

http://shodhganga.inflibnet.ac.in/bitstream/10603/37568/8/08_chapter%202.pdf

http://www.mondaq.com/india/x/526406/Patent/What+Can+Be+Patented+in+India

http://shodhganga.inflibnet.ac.in/bitstream/10603/96177/7/07_chapter%202.pdf