Applying for a patent

Patentability

What are the criteria for patentability in your jurisdiction?

The basic criteria for patentability of an invention in India are as follows:

  • Absolute novelty – the invention should be new and not disclosed to the public anywhere in the world in any form or through any medium.
  • Inventive step/non-obviousness – the invention should not be obvious to a person skilled in the art in the relevant area of technology and should involve an inventive feature which is distinctive in nature from the previous inventions made in the same field.
  • Industrial application – the new product or process should be capable of being made or used in an industry and it should have economic significance.

What are the limits on patentability?

The following are not considered as inventions and are not patentable under Sections 3 and 4 of the Patents Act 1970:

  • an invention which is frivolous or which claims anything obviously contrary to well-established natural laws;
  • an invention whose primary or intended use or commercial exploitation is contrary to public order or morality or which causes serious prejudice to human, animal or plant life, health or the environment;
  • the mere discovery of a scientific principle or the formulation of an abstract theory;
  • the discovery of a living thing or a non-living substance occurring in nature;
  • the mere discovery of a new form of a known substance which does not enhance the known efficacy of that substance, the mere discovery of a new property or new use for a known substance or the mere use of a known process, machine or apparatus unless the known process results in a new product or employs at least one new reactant (wherein salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance will be considered to be the same substance, unless they differ significantly in properties with regard to efficacy);
  • 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;
  • the mere arrangement, rearrangement or duplication of known devices which function independently of one another in a known way;
  • a method of agriculture or horticulture;
  • any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings, 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;
  • plants and animals in whole or any part thereof other than microorganisms, including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
  • a mathematical or business method, a computer programme per se or algorithms;
  • a literary, dramatic, musical or artistic work or any other aesthetic creation, including cinematographic works and television productions;
  • a mere scheme, rule or method of performing a mental act or playing a game;
  • a presentation of information;
  • the topography of integrated circuits;
  • an invention which, in effect, is traditional knowledge or an aggregation or duplication of known properties of traditionally known component or components; and
  • inventions relating to atomic energy.

To what extent can inventions covering software be patented?

The patentability of software inventions in India can be understood in light of Section 3(k) of the Patents Act 1970 and the Guidelines for Examination of Computer Related Inventions (CRIs) published by the Office of the Controller General of Patents, Designs and Trademarks.

Section 3(k) of the act bars the patentability of a computer program per se. However, recent patent grants to CRIs by the Indian Patent Office indicate that software inventions may be patentable if:

  • there is technical advancement in the invention over the existing prior arts; and
  • the invention provides a technical solution to a technical problem by providing a practical application or an improved technical effect of the underlying software.

Further, the latest guidelines state that while examining a computer-related invention, the patent examiner would focus on the underlying substance of the invention and not the particular form in which it is claimed.

To what extent can inventions covering business methods be patented?

According to Section 3(k) of the Patents Act 1970, business methods are not patentable. Further, the Manual of Patent Office Practice and Procedure in India provides that business methods claimed in any form are not patentable subject matter. Moreover, the manual emphasises that this exclusion applies to all business methods; therefore, even if business methods are claimed alongside technical features such as the Internet, networks, satellites and telecoms, they do not qualify as patentable subject matter and may fall under the purview of Section 3(k) of the act.

To what extent can inventions relating to stem cells be patented?

Section 3(j) of the Patents Act 1970 states that “plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals" are not inventions as per the act and hence not patentable.

Stem cells are considered to fall under the phrase “any part thereof” and hence are excluded from patentability. However, in vitro methods of differentiating, isolating/purifying and culturing of stem cells may qualify as patentable subject matter, provided that the method is novel, involves an inventive step and has industrial applicability.

In addition, inventions pertaining to stem cells may also be opposed under Section 3(b) of the Act, which prohibits the grant of patent to:

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.

Are there restrictions on any other kinds of invention?

No. Sections 3 and 4 of the Patents Act, 1970 stipulate inventions that are not patentable under the act.

Grace period

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