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Applying for a patent
What are the criteria for patentability in your jurisdiction?
As per the Patents Act 1970, the basic criteria for patentability of an invention are as follows:
- Novelty – the invention should be new and not disclosed to the public anywhere in the world in any form or through any medium.
- Non-obvious – 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?
Under Section 3 of the act, the following inventions are not considered patentable:
- 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 (for the purposes of this clause, 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; or
- an invention which, in effect, is traditional knowledge or an aggregation or duplication of known properties of traditionally known component or components.
To what extent can inventions covering software be patented?
On June 30 2017 the Patent Office released revised Guidelines for Examination of Computer Related Inventions (CRIs) in furtherance to its continuous efforts to provide clarity and maintain homogeneity in the process of examination of patent applications pertaining to CRIs.
The first set of guidelines were released in 2015 and were kept in abeyance owing to numerous representations that were sent to the Patent Office by interested parties. Subsequently, revised guidelines were released in 2016, which stressed the requirement of novel hardware and directed the examiners to deny patents which even remotely related to mathematical methods, business methods and algorithms.
The 2016 guidelines discussed various procedures which were to be adopted by the Patent Office, while examining applications and jurisprudence that evolved in this field. Although the new guidelines state that the claim should be denied if the invention’s only contribution relates to a computer program, the granting of a patent for a software-related invention is not ruled out. However, the guidelines emphasise that “a computer program per se” is not patentable unless it is in combination with hardware, which must be more than a general-purpose machine.
Further, as patents are granted to inventions in all fields of technology, it is important to ascertain from the nature of the claimed computer-related invention whether it is of a technical nature involving technical advancement compared to the existing knowledge, or whether it has economic significance and is not subject to exclusion under Section 3(k) of the Patents Act 1970.
Section 3(k) states that “a mathematical or business method or a computer programme per se or algorithms” are not patentable.
In this context, the 2015 guidelines adopted a much broader interpretation of Section 3(k), considering the subject matter of a novel computer program with known hardware, which goes beyond the normal interaction with such hardware and affects a change in the functionality or performance of the existing hardware to be patentable.
The 2015 guidelines further emphasised that a computer program, when running on or loaded into a computer, went beyond normal physical interactions between the software and the hardware on which it is run, and is capable of bringing further technical effect may not be considered as an exclusion under these provisions.
However, after much debate, the 2015 guidelines were narrowed and the 2016 guidelines stated that if the contribution lies in the field of computer programming it must be connected to novel hardware. If the contribution lies solely in a computer program, it is not patentable.
Finally, the 2017 guidelines superseded the 2016 guidelines. The 2017 guidelines are in substance based on the 2016 guidelines and reiterate that while assessing the patentability of CRIs the focus should be on the underlying substance of the invention and not the particular form in which it is claimed.
However, the 2017 guidelines have done away with the requirement of novel hardware by deleting the Stage 3 test to determine the patentability of CRIs and the ensuing restrictive illustrative examples of claims which are considered not to be patentable, thus leaving more room for interpretation as to what constitutes patentable subject matter.
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, it emphasises that this exclusion applies to all business methods; therefore, even if business methods are claimed along with some technical features such as the Internet, networks, satellites and telecommunications, they do not qualify as patentable subject matter and may fall under the purview of Section 3(k).
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 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?
Apart from the exclusions under Section 3 of the Patents Act 1970, Section 4 also imposes a strict prohibition on the patentability of inventions related to atomic energy.
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