Since you are here, you may be wondering what is this criteria of industrial application to get a patent in India. What are other criteria or requirements?
Before we proceed any further, you may want to check this out: 6 Requirements To Get A Patent In India
So, the third requirement to get a patent in India is that the invention must be Capable of Industrial Application.
What does “capable of industrial application” mean?
The answer to this question we find in Section 2(1)(ac) of the Indian Patent Act, 1970 (as amended). According to Section 2(1)(ac), “capable of industrial application”, in relation to an invention, means that the invention is capable of being made or used in an industry.
In other words, the patentable invention can’t exist in the abstract or in isolation. It should have some real-world industrial application.
Another Section that mentions the expression ‘capable of industrial application’ is Section 2(1)(j) of the Indian Patent Act, 1970 (as amended).
Section 2(1)(j) defines the term “invention” in Indian law as – “invention” means a new product or process involving an inventive step and capable of industrial application“
In this regard, when the patent examiner assesses an invention for being capable of industrial application, he looks for the capability of the invention to be used in any industry or to be made using an industrial process.
How Did Industrial Capability Come Into Indian Patent Act?
The introduction of the expression “capable of industrial application” was done via the Patents (Amendment) Act, 2002.
In this amendment of 2002, the whole Section 2(1)(j) was substituted introducing a new definition of “invention”.
Further, Section 2(1)(ac), which gives the meaning of “capable of industrial application” was also introduced in the amendment of 2002.
These amended Sections 2(1)(j) & 2(1)(ac) came into force on May 20, 2003.
Before 2002, Section 2(1)(j) defined invention as, “any new and useful-
(i) art, process, method or manner of manufacture,
(ii) machine, apparatus or other article,
(iii) substance produced by manufacture, and
includes any new and useful improvement of any of them and an alleged invention.”
Moreover, Section 64(1)(g) of the Indian Patent Act lays grounds for the revocation of patents if the invention is not useful.
Therefore, upon reading Section 64(1)(g) and old Section 2(1)(j), we find that the concept of “usefulness” was the closest thing to ‘industrial application’ and was an important factor in Indian Patent Law.
The difference we see after 2002 in Section 2(1)(j), is due to India becoming a PCT member on December 7, 1998. Moreover, India also acceded to the Paris Convention for the Protection of Industrial Property in 1998.
In this regard, it would be interesting for you to have a look at the similarities between Section 2 of the Indian Patent Act and Article 33 of PCT while addressing “invention” and “industrial applicability”.
Let’s look at PCT’s relevant provisions in Article 33:
Article 33: (1) The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.
(4) For the purposes of the international preliminary examination, a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry. “Industry” shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.
(5) The criteria described above merely serve the purposes of international preliminary examination. Any Contracting State may apply additional or different criteria for the purpose of deciding whether, in that State, the claimed invention is patentable or not.
So, not only do we see similarities between Section 2 of the Indian Patent Act and Article 33 of PCT, but we also see the basis for it in article 33(5).
Let’s see what the Paris Convention has to say about this, as referred to in Article 33(4) above:
Article 1(3): Industrial property shall be understood in the broadest sense and shall apply not only to industry and commerce proper, but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers, and flour.
So, it is now clear how the concept of industrial application came about in India and what the international treaties say about it.
Having said that, let’s now move on to how an examiner assesses whether an invention is capable of industrial application.
Industrial Application and Examination
The guiding light for assessing what it means to be “capable of industrial application” comes from Section 2(1)(ac) of the Indian Patent Act.
As a result, the examiner determines if the claimed invention is capable of being made or used in an industry.
As a practice, usually, the complete specification describes the industrial applicability of the invention itself. Moreover, you, as an applicant, have to mention the specific utility of the invention.
In this regard, merely stating that the invention would be industrially applicable would not suffice.
For example, stating that a device is useful in the diagnosis of unspecified disease or mentioning that a compound has useful biological properties or a compound may be useful in treating unspecified disorders would not suffice.
You will have to indicate the specific use of the compound or the device.
Let’s take a few more examples with no industrial application.
- A perpetual motion machine: A perpetual machine is contrary to the laws of nature. If the claimed invention doesn’t comply with the accepted laws of physics, the perpetual machine, for example, then it lacks the capability of industrial application as it can’t be used. In that case, the industrial application would relate to a lack of sufficiency of disclosure. Because no amount of description can describe the working of the invention as it won’t work.
- A ghost-detector or ghost-catcher: Catching a ghost is contrary to accepted natural laws, and therefore, no ghost-catcher device has been granted to date. As of now, no amount of description will meet the sufficiency of disclosure criteria also. There have been instances where patents for fancy ghost detectors useful for the purpose of amusement and playing have been granted. One such patent, you can have a look at is a toy ghost detector device. It is merely a toy device for playing and not a real ghost detector.
- A plastic film covering the entire surface of the earth to absorb UV rays: As it is evident from the invention itself, it will never turn into a practical application, such an invention is not capable of industrial application.
- An idea for penal reform by substitution of voluntary corporal punishment
- A method for regulating the city traffic
- A smoking method
Note: It is very much possible that the same invention may be rejected for different reasons in different countries.
In some countries, the invention might be rejected for not being an “invention” as per the definition of their laws;
In some countries, it might get rejected for not being capable of industrial application; and
In some countries, it might get rejected for falling under non-patentable subject matter.
A method for treatment of the human body may be considered not industrially applicable in some countries; whereas it may be considered non-patentable subject matter, in India for example.
Where do you indicate the industrial application in the patent specification?
Industrial application or usefulness is typically revealed while disclosing ‘to what field the invention relates’ and ‘what is the advantage of the invention’.
While the statement “this invention relates to….” lays out the relation of the subject matter of the invention to the technical field. The advantages of the invention clearly point out the preferable use of the invention in a technical field.
There is no set template for disclosing the usability of the invention, therefore, it may be possible that the use of the invention is disclosed in other sections of the specification also, for example in summary, description, background, etc,.
Guidance From Courts & Institutions For Understanding Industrial Application
The court while considering Sections 2(1)(j) & 2(1)(ac) remarked that an invention must have commercial use or manifestation. The court observed that it is possible that an alleged invention may not be a final product, but it doesn’t mean that the invention shouldn’t have some commercial viability. Thus, it is not the product which is the focus of attention but the actual physical substance created which has the potential of a commercial manifestation.Cipla Ltd. vs F.Hoffmann-La Roche Ltd. & Anr. on 27 November, 2015
The court cited Halsbury (3rd Edn.) Vol. 29 p. 59 Para. 123, “not useful” in patent law means that the invention will not work, either in the sense that it will not operate at all or more broadly, that it will not do what the specification promises that it will do. If the invention will give the result promised at all, the objection on the ground of want of utility must fail. It is further stated in the said passage that the practical usefulness or commercial utility of the invention does not matter, nor does it matter whether the invention is of any real benefit to the public, or particularly suitable for the purposes suggested, and that it is only failure to produce the results promised that will invalidate the patent, not misstatements as to the purposes to which such results might be applied.
In Terrell on the Law of Patents, (11th Edn.) p. 98 para 248, quoting from an English case, it is stated that if the patentee claims protection for a process for producing a result and that result cannot be produced by the process, the consideration fails. It is further stated there that objections to patents on such grounds are sometimes treated as objections for want of utility, and when so treated, the well known rule is that the utility of an invention depends upon whether, by following the directions of the patentee, the result which the patentee professed to produce can in fact be produced.
Quoting from another English case, the same proposition is stated in another way in Terrellat p. 99, viz. that the protection is purchased by the promise of results, and that it does not, and ought not, to survive “the proved failure” of the promise to produce the results.Farbewerke Hoechst … vs Unichem Laboratories And Ors. on 11 July, 1968
We have seen that prior to the 2002 amendment, an invention meant “any new and useful..”. In this regard the court held:
“The fundamental principle of Patent law is that a patent is granted only for an invention which must have novelty and utility”.Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries on 13 December, 1978
The important case in this context is Lakhapati Rai & Ors. Vs. Srikissen Dass & Ors. (1917). It was held that ‘utility’ does not mean improvement. It means practicability. The test of utility is whether the invention will work and whether it will do what is claimed for it.Refer section 2.3.3 of the MANUAL OF PATENT PRACTICE AND PROCEDURE THE PATENT OFFICE, INDIA, 2008.
Processes or articles alleged to operate in a manner which is clearly contrary to well-established physical laws, such as perpetual motion machines, are regarded as not having industrial application, as was held in Paez’s Application (BL O/176/83) and Webb’s Application (BL O/84/88), and in Peter Crowley v United Kingdom Intellectual Property Office Refer section 4.05 of UK’s Manual of Patent Practice or page 59 of Indian Patent Ofiice, 2008
For example, in Eastman Kodak Co. v American Photo Booths Inc. (BL O/457/02), which concerned a patent for a photo-booth camera, it was held that the folded optical path as described and claimed could not give rise to the claimed narrowing of the depth of field. As a result, the hearing officer held that the invention could not work as described and claimed, and so lacked both industrial applicability and sufficiency of disclosure.Eastman Kodak Co. v American Photo Booths Inc. (BL O/457/02); Refer section 4.05 of UK’s Manual of Patent Practice.
For better understanding, you can refer to some of the other case examples mentioned in sections 4.02, 4.03 & 4.05 of UK’s Manual of Patent Practice.
What is The Position of Other Countries on Industrial Application?
Article 52(1) of European Patent Convention (EPC) states: “European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application”
Article 57 of EPC states: “An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.”
Rule 42(1)(f) talks about indicating explicitly when it is not obvious from the description or nature of the invention, the way in which the invention is industrially applicable.
AS per 35 U.S.C. 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, subject to the conditions and requirements of this title.”
As per Article 29(1) of the Patent Act of Japan, “A person that invents an invention with industrial applicability may obtain a patent for that invention, unless the invention is as follows:
(i) an invention that is public knowledge within Japan or in a foreign country prior to the filing of the patent application;
(ii) an invention that is publicly known to be worked within Japan or in a foreign country prior to the filing of the patent application; or
(iii) an invention that is described in a distributed publication or made available for public use over telecommunications lines within Japan or in a foreign country prior to the filing of the patent application.”
As per Article 29(1) of the Patent Act of South Korea, “Inventions having industrial applicability may be patentable unless they fall under any of the following subparagraphs:
1. Inventions publicly known or worked in the Republic of Korea or in a foreign country prior to the filing of the patent application;
2. Inventions described in a publication distributed in the Republic of Korea or in a foreign country prior to the filing of the patent application or inventions made accessible to the public through telecommunication lines prescribed by Presidential Decree.”
As per Article 22 of the Patent Law of China, “Any invention or utility model for which patent right may be granted must possess novelty, inventiveness and practical applicability.” Further, it defines what is novel, inventiveness, and practical applicability. In that, it talks about the meaning of practical applicability i.e. the invention or utility model can be made or used and can produce effective results.
In this article, we saw what is the meaning of “an invention being capable of industrial application in India”. However, we also checked out relevant provisions of patent laws of other countries to understand the concept in a solid way.
Indian Patent Law is not completely different than foreign patent laws as India is a member of PCT and Paris Convention. Therefore, to understand the topic holistically, we looked at what other patent laws have to say about industrial applicability.
An invention being capable of industrial application is one of the requirements to get a patent in India. If you want to explore all the other requirements then we have written an article suitable for you: 6 Requirements To Get A Patent In India.
You can also find other resources and many such topics for learning here.