Are you looking to file a patent application in India? Or are you a learner who wants to understand patenting system in India? Then you might be wondering what requirements I must meet in order to be eligible for a patent.
In this article, we will deal with these requirements one by one in detail. So, what does Indian Law say about it?
Section 2(1)(j), 3 & 4 of the Indian Patent Act, 1970 (as amended) lists these requirements quite in detail. For the purpose of this article, we will explore these sections and more.
Section 2(1)(j) of the Indian Patent Act talks about the definition of an invention in India. According to Section 2(1)(j), “invention” means a new product or process involving an inventive step and capable of industrial application;
Further, Section 3 of the Indian Patent Act lists the subject matter that cannot be patented in India, even when it fulfills the criteria of Section 2(1)(j).
Section 4 of the Indian Patent Act forbids patents for inventions relating to atomic energy.
The next requirement comes from Section 6 of the Biodiversity Act, 2002. Under this provision, you need to get permission from the National Biodiversity Authority (NBA). However, this is required only when biological material obtained from India is used in the patent application.
So, if we make a list of the requirements, it will look like this
|Patent Act, 1970 (as amended)||2(1)(j)||New|
|Patent Act, 1970 (as amended)||2(1)(j)||Inventive|
|Patent Act, 1970 (as amended)||2(1)(j)||Capable of Industrial Application|
|Patent Act, 1970 (as amended)||3||Should not fall under non-patented subject matter listed out by Section 3|
|Patent Act, 1970 (as amended)||4||Should not be related to Atomic Energy|
|Biodiversity Act, 2002||6||Permission from NBA if Biological material from India used in the patent application|
Now, let’s look at these requirements one by one.
1. New Product or Process
A test to determine whether the product or process claimed in the invention is new is called a novelty test. For this, a novelty search is conducted.
If our invention is found to have newness over the previous arts then it is said to possess novelty.
The novelty of the subject matter of the patent application is assessed against one prior art document only. If that one prior art document discloses all the features of the subject matter of a patent application, the document is said to have anticipated the subject matter of the patent application.
In the case of anticipation, your patent application will not pass the novelty test.
Now, imagine a situation where you yourself directly or indirectly end up disclosing your invention. Will that disclosure act as a prior art anticipating the subject matter of your future patent application?
Regarding anticipation in such a scenario, the Indian Patent Act, 1970 (as amended) has detailed provisions in Sections 29–34.
Initially, we saw that the requirement for a “new product or process” comes from Section 2(1)(j) of the Act. However, there are other Sections such as 2(1)(l), 13, and 18 of the Indian Patent Act, 1970 (as amended) which relate to the novelty of the subject matter of the patent application.
In fact, it is Section 2(1)(l) that tells us what is a “new invention”.
It states, “new invention” 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 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.
The novelty search is conducted twice in the lifetime of a patent application: one by the applicant and another by the patent examiner.
The motivation for the examiner to conduct the novelty search is clear as he assesses the patentability of the alleged invention.
But why does an applicant conduct a novelty search? There are the following reasons:
- To get the idea of the closest or similar prior arts so that the applicant can tweak claims of his patent application in such a way that the claims overcome the problem of lacking novelty over those found similar prior arts.
- To draft the patent specification of the patent application keeping in mind the previous work disclosed in the prior arts.
- To find out gaps between the prior art and the applicant’s invention. Based on those gaps, drafting claims in a broader or in narrower manner.
- To find what can be the scope of the claims of the patent application in light of available prior art so that the granted patent can fetch the maximum benefit to the applicant.
- To avoid waste of resources such as time, energy, and money if the subject matter of claims is found to lack novelty.
It is normal for a patent application to get rejected on the basis of a lack of novelty in the first examination report (FER). You are given multiple chances to overcome the rejection.
So, when you get a novelty rejection, you can contest it by arguing how does your application not lack novelty in order to convince the patent examiner to withdraw the rejection. Another way to respond to the novelty rejection is by amending your claims.
If you want to know more about the concept of Novelty in India, we have written a comprehensive article on it: What is Novelty: An Indian Point of View.
2. Inventive Step
After assessing the novelty of a patent application, the examiner moves on to assess the inventiveness of the subject matter of the patent application.
Indian Patent Act, 1970 (as amended) guides us in this regard via Section 2(1)(ja).
It states “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.
This way, we come across three important terms: 1. technical advance, 2. economic significance, 3. not obvious. So, we have 3 situations where the invention is said to possess inventive step in India. These are:
- technical advance and not obvious,
- economic significance and not obvious,
- technical advance and economic significance and not obvious.
To assess the inventive step, we can use more than one document and combine their teachings to see if a person skilled in the art (PSITA) would arrive at the subject matter of the patent application.
Now, you’d be wondering who is a person skilled in the art? what do you mean by technical advance, economic significance, and not obvious to a person skilled in the art? How do you combine the teachings of multiple documents?
From time to time, various courts, IPAB (now abolished), and patent office have been issuing guidelines/ decisions on these matters. When we go through these guidelines/ decisions, we start to get a clear picture of the meaning of these terms.
We have written a comprehensive article addressing all of the above issues and more that you may not want to miss: What is Inventive Step: An Indian Perspective.
3. Capable of Industrial Application
It is possible for claims of a patent application to pass the inventive step test and fail in meeting the third requirement i.e. capability of Industrial Application.
So, what does it mean to be capable of industrial application?
Let’s look at this from a legal perspective.
Relevant Sections of the Indian Patent Act that talk about industrial application are 2(1)(j), 2(1)(ac) & Section 64(1)(g).
We have already seen the statement in Section 2(1)(j). Now, let’s look at Section 2(1)(ac) which says: “capable of industrial application”, in relation to an invention, means that the invention is capable of being made or used in an industry.
Based on Section 2(1)(ac), it is the duty of the patent examiner to examine if the claimed invention is capable of use in any industry or can be made using an industrial process.
The examiner can assert whether your invention meets the criteria of this requirement by looking at specification of your patent application.
It is a practice to indicate the industrial application in the patent specification itself in a self-evident manner.
For example, description of a patent specification normally begins with a general statement indicating briefly the field to which the invention relates. e.g., ‘This invention relates to….”.
After describing the field of invention, typically, the advantages of the invention are mentioned to clearly point out the areas of the application and the preferable use of the invention. In other words, the applicant can indicate industrial applicability in this part of the specification.
Writing the industrial application as a mere suggestion would not suffice to pass the test of industrial applicability. You have to clearly bring out the specific use in the specification supported by the disclosure.
For example, stating that a device is useful in the diagnosis of an unspecified disease or a compound has biological properties or a compound can be used in the treatment of unknown disorders would not suffice.
A specific utility has to be pointed out in the specification along with the support in the disclosure so that the examiner can allow the application to pass through the test of being capable of industrial application.
If you refer to Section 64(1)(g) of the Indian Patent Act, it lays the ground for revocation if the claimed invention is not useful. This means that even if your invention gets past the examiner’s eye, it may still be revoked at a later stage if it is found not to be useful.
Utility is not the characteristic of the Indian Patent System alone. It is the world over criteria among various legislations. In fact, After India joined PCT and Paris convention in December 1998, the Indian Patent Act was amended in 2002 in order to streamline Indian legislation with the world.
You may want to read further about many aspects of industrial utility/ application such as various court decisions and their impact on the concept of industrial utility, similar provisions around the world, examples of inventions failing industrial application test, and more.
We have written a comprehensive article shown below on this topic covering each aspect of Industrial application in detail.
4. What Can Not Be Patented In India
First, three requirements i.e. novelty, inventive step, and industrial application were derived from Section 2(1)(j) of the Indian Patent Act, 1970 (as amended). However, this requirement comes from Section 3 of the Indian Patent Act, 1970 (as amended).
Said Section 3 lists “what are not inventions” in India.
Every patent application that is filed in Indian Patent Office is assessed to see if the subject matter of the patent application attracts the provisions of Section 3.
If the subject matter falls under Section 3, it will not be considered an invention in India even if it meets the first three requirements as listed in Section 2(1)(j) of the Indian patent Act, 1970 (as amended).
Note: As no patent is granted for the subject matter falling under Section 3, from time to time, guidelines and decisions have been issued by the Patent Office, IPAB (now abolished), and High Courts.
For example, regarding computer inventions, Clause (k) of Section 3 has been one of the most talked about provisions in the Indian Patent Act.
It is Section 3 which bars the inventions such as a perpetual motion machine, a ghost-catcher device, a machine for theft, a machine for counterfeiting currency notes, a method of agriculture, a method of playing chess, a method of teaching, etc.
We have written a comprehensive article detailing every aspect of Section 3 which you’d love to explore: What You Cannot Patent In India? (Here’s The List)
5. Inventions Relating To Atomic Energy
To get a patent in India, your invention should not be related to Atomic Energy. It is Section 4 of the Indian Patent Act, 1970 (as amended) that bars patents in this field.
It doesn’t matter if your invention satisfies the condition of being an invention as laid out in Section 2(1)(j) and avoids getting rejected due to Section 3. If it falls under the provisions of Section 4, it will be rejected.
We have written more about this provision here.
6. Permission From NBA, If Required
This is a conditional requirement. This requirement emanates from Section 6 of the Biodiversity Act of 2002.
According to it, you need to take permission and other information from National Biodiversity Authority to make a patent application if you have used a biological material obtained from India in your patent application.
You have to make a declaration regarding the same in Form 1, column 12(iii) while making the patent application as shown below:
We have explained it with an example, you can take a quick glance at it here.
We have seen 6 requirements to get a patent in India. Interesting thing to note here is corresponding Sections to these requirements are inclusive and exclusive in nature.
For example, Section 2(1)(j) mandates subject matter to be new, inventive and industrial applicable. So, it is inclusive of any subject matter which meets criteria of it.
Whereas Sections 3 & 4 are excluding any subject matter listed by them.
Last requirement is conditional in nature and has to be met only when you have used a biological material in your patent application and that material has been obtained from India.
After going through these requirements/ criteria to get patent in India, you may want to look more of such articles here.