The history of the patenting system in India goes as far back as 1856. It was Act VI of 1856 for the protection of invention which was based on the British Patent Law of 1852.
Since then, from time to time, the statute has been laying grounds for what makes a subject matter patentable and what does not.
It is well-known that patent rights are territorial in nature, therefore, what forms a patentable subject matter varies from country to country.
As per Section 2(1)(j) of the Indian Patent Act, 1970 (as amended), "invention" means a new product or process involving an inventive step and capable of industrial application.
However, the subject matter fulfilling the criteria of Section 2(1)(j) may or may not fall under patentable subject matter.
Subject matter covered under clauses (a) to (p) of Section 3 and inventions relating to atomic energy under Section 4 are not patentable as per the Indian Patent Act, 1970 (as amended).
Before getting omitted by the patents (amendment) Act, 2005, Section 5 also excluded product patents for food, pharma, and chemical inventions from the list of patentable subject matter in India.
Every country has some kind of provision in its patent laws to avoid a situation where they end up granting a patent that is prejudicial to the interests of that country.
Before we delve into one of the important requirements to get a patent in India i.e. Invention should not fall under the category of Inventions not Patentable, you may want to have a look at 6 Requirements To Get A Patent In India.
Chapter II: INVENTIONS NOT PATENTABLE
India too has ensured safeguards and therefore, has inserted Chapter II in Indian Patent Act. Chapter II of the Indian Patent Act which comprises Sections 3, 4 & 5 (omitted) is titled “INVENTIONS NOT PATENTABLE”.
Section 3: What Are Not Inventions
Section 3(a): An invention which is frivolous or which claims anything obviously contrary to well established natural laws.
- A perpetual motion machine alleged to be giving output without any input is not patentable as it is contrary to natural law.
- A ghost-catcher device (it’d be interesting though to have a device that can catch or detect ghosts, isn’t it? The ghosts may very well be subject to natural laws, but these are not well-established as of yet.).
Section 3(b): An invention, the primary or intended use or commercial exploitation of which would be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment is not an invention
- Any device, apparatus, or machine for theft, gambling apparatus, or method for gambling.
- A method of adulteration of food, drug, or medicine.
- Any machine or method for counterfeiting currency notes.
- An invention the use of which can cause serious prejudice to human beings, plants and animals.
- An invention, the primary or intended use of which is likely to violate the well-accepted and settled social, cultural, and legal norms of morality, e.g. a method for cloning humans.
However, if the primary or intended purpose or commercial exploitation of a claimed invention is not causing serious prejudice to human, animal, or plant life or health or to the environment, such a subject matter may be considered to be an invention and may be patentable. For instance, a pesticide.
Section 3(c): the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature
- A claim for the discovery of a scientific principle is not considered to be an invention, but such a principle when used with a process of manufacture resulting in a substance or an article may be considered to be an invention.
- Finding that particular known material is able to withstand much shock is a discovery & therefore is not patentable, but a claim of a railway fastener made of the material would not fall under this exclusion and would be allowed if it passes the test of novelty and inventive step.
- A scientific theory is a statement about the natural world. These theories are not considered inventions no matter how revolutionary they are. However, if a theory leads to practical application in the process of manufacturing an article or substance, it may well be patentable.
- A claim for the formulation of an abstract theory is not considered to be an invention. For instance, it is a discovery and not an invention when a known substance or object is revealed to possess a previously unidentified property. However, if the finding reveals that the substance may be utilized to create a specific product or in a specific process, the product or procedure may be regarded as an invention.
Section 3(d): the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
According to this Section, the following things are not inventions and therefore cannot be patented:
- mere discovery of a new form of a known substance that does not result in the enhancement of the known efficacy of that substance;
- the mere discovery of any new property of a known substance;
- the mere discovery of new use for a known substance;
- the mere use of a known process unless such a known process results in a new product or employs at least one new reactant;
- the mere use of a known machine or apparatus.
Further, this provision provides an explanatory clause to make it more clear which reads as follows:
“Explanation:- 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 shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy”.
The explanation to Section 3(d) further clarifies that the salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of known substances may be considered to be the same substance.
It however states that such salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of such known substance may be considered patentable only if they differ significantly in properties with regard to efficacy.
Example: A new use of Aspirin for cardiovascular disease, which was earlier used for analgesic purpose, is not patentable. However, a new and alternative method for preparing Aspirin is patentable.
The Examiner on a case-to-case basis applies the test as to what constitutes such salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other derivatives to differ significantly in properties with regard to efficacy from the known substance.
The complete specification may clearly state in the description how the subject matter differs significantly from the known substance in terms of efficacy. This can be done at the time of specification filing or later by way of amendment under Section 59 of the Patent Act.
In a recent case in relation to a pharmaceutical substance, the Madras High Court held that efficacy means therapeutic efficacy.
The court held that:
―going by the meaning for the word “efficacy” and “therapeutic”… what the patent applicant is expected to show is, how effective the new discovery made would be in healing a disease having a good effect on the body? In other words, the patent applicant is definitely aware as to what is the “therapeutic effect” of the drug for which he had already got a patent and what is the difference between the therapeutic effect of the patented drug and the drug in respect of which patent is asked for.” “Due to the advanced technology in all fields of science, it is possible to show by giving necessary comparative details based on such science that the discovery of a new form of a known substance had resulted in the enhancement of the known efficacy of the original substance and the derivatives so derived will not be the same substance, since the properties of the derivatives differ significantly with regard to efficacy.”.(Novartis AG Vs. Union of India, W.P. No. 24760/06)
Section (e): 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;
Example: A mixture of sugar and some colorants in water to produce a soft drink is a mere admixture resulting in aggregation of the properties. But combinations giving Synergetic effects are Patentable.
So, an admixture with synergistic properties, such as soap, detergent, lubricant, or polymer composition, is not regarded as merely an admixture and may therefore be regarded as patentable.
If an invention is a combination then the combining effect should be more than the sum of individual effects.
In combination, the synergistic effect matters. By showing a comparison, you can disclose the synergistic effects at the time of filing the specification. In future office actions, you may do further submissions regarding synergism to support your claim in the specification.
Section 3(f): The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
- Umbrella fitted with a fan,
- a bucket fitted with a torch,
- clock and transistor in a single cabinet.
These are not patentable since they are just the arrangement and rearranging of items with no working interrelationship and are devices capable of functioning independently of each other.
What do courts have to say about this clause (f) of Section 3?
1. A new combination may be the subject matter of a patent although every part of the combination, per se, is old, for here the new article is not the parts themselves but the assembling and working of the parts, together. The merit of a new combination very much depends upon the result produced. Where a slight alteration turns that which was practically useless into what is useful and important, it is fit subject matter for a patent.(Lallubhai Chakkubhai v. Shamaldas Sankalchand Shah, AIR 1934 Bom 407)
2. When two or more features of an apparatus or device are known, and they are juxtaposed without any inter- dependence on their functioning, they should be held to have been already known.(Rampratap v. Bhabha Atomic Research Center, 1976 IPLR 28 P. 35)
3. A new and useful application of an old principle may be good subject matter. An improvement on something known may also afford subject-matter; so also a different combination of matters already known. A patentable combination is one in which the component elements are so combined as to produce a new result or arrive at an old result in a better or more expeditious or more economical manner. If the result produced by the combination is either a new article or a better or cheaper article than before, the combination may afford subject-matter of a patent.(Lallubhai Chakubhai Vs. Chimanlal and Co. (AIR 1936 Bom 99.)
4. 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. A combination of old known integers may be so combined that by their working inter-relation, they produce a new process or an improved result. Mere collocation of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent. .(Biswanath Prasad Radhey Shyam Vs. Hindustan Metal Industries (1979) 2 SCC, 511)
Section 3(g): It was omitted by the Patents (Amendment) Act, 2002.
Section 3(h): A method of agriculture or horticulture;
- A method of producing mushrooms,
- A method for cultivation of algae,
- A method for removal of weeds,
- A way of growing a plant, even if it required altering the conditions under which natural events would take their inevitable course (for instance a green-house)
Section 3(i): 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.
Methods or processes which are not patentable-
- Medicinal: a method of administering medications orally or through injectables,
- Surgical: a stitch-free incision for cataract removal,
- Curative: a technique for removing plaque from teeth,
- Prophylactic: a method of vaccination,
- Diagnostic: determining fitness of a person,
- Therapeutic: process relating to therapy,
- a method of treating cows for increasing milk yield
- Manufacture of prostheses or artificial limbs and taking measurements of that on human body
Note: (a) Patent may be obtained for surgical, therapeutic or diagnostic instrument or apparatus. (b) Therapy does not include applying substances to the body for merely cosmetic reasons.
Section 3(j): 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;
Clones and a new variety of plants are not patentable. However, genetically modified organisms (GMO) are patentable.
Other than those discovered in nature, microorganisms may be patented. Genetically modified microorganisms, for example, may be patentable subject to other Patentability conditions.
Note: Plant varieties in India are protected by the provisions of the Protection of Plant Varieties and Farmers' Rights Act, 2002.
Section 3(k): a mathematical or business method or a computer programme per se or algorithms;
- method of controlling traffic,
- scheme or method of book-keeping,
- business method in accounting,
- method of tax collection,
- computer programs
If your patent application belongs to electrical or computer field, chances are you will get your patent application rejected based on Clause (k) of Section 3 in the first examination report (FER).
However, this is not the final rejection. You get to respond to the rejection and negotiate with the examiner & controller in the Indian Patent Office.
For the purpose of this Clause, Revised guidelines for Examination of Computer-related Inventions (CRIs), 2017 were released.
A brief is explained below for quick reference. Do refer to these CRIs to understand the Indian Perspective on mathematical method, business method, a computer program per se.
1. Mathematical Method Claims:
Mathematical methods are purely abstract and hence not patentable. For example, method of addition, method of calculation, method of finding square root or cube root, etc.
This category also excludes simple manipulations of abstract ideas or the solution of purely mathematical problems/equations that do not define a practical application.
Note: a. The mere appearance of a mathematical formula in a claim to clearly identify the area/ scope of protection sought in an invention does not always imply that it is a mathematical method claim. b. Furthermore, such exclusions may not apply to innovations containing mathematical formula and resulting in systems for encoding, noise reduction in communications/electrical/electronic systems, or encrypting/decrypting electronic communications.
2. Business Method Claims:
The phrase “Business Methods” refers to a wide range of operations in a commercial or industrial enterprise that includes the transaction of goods or services.
If a claim is essentially a “business method”. For example: carrying out business/ trade/ financial activity/ transaction and/ or a method of buying/ selling goods through the web (e.g., providing web service functionality), such a claim is excluded from the patentable subject matter.
However, mere presence of the words such as “enterprise”, “business”, “business rules”, “supply-chain”, “order”, “sales”, “transactions”, “commerce”, and “payment”, etc. doesn’t render the claims as business method. It may or may not be a business method claim.
3. Algorithm Claims:
Algorithm in all forms including but not limited to a set of rules or procedures or any sequence of steps or any method expressed by way of a finite list of defined instructions, whether for solving a problem or otherwise, and whether employing a logical, arithmetical, or computational method, recursive or otherwise, are excluded from patentability.
4. Computer Programme ‘per se’ Claims:
- Computer programmes/ set of instructions/ routines and/ or sub-routines,
- Computer programmer products/ storage medium having instructions/ database/ computer memory with instruction stored in a computer-readable medium
Note: The term “per se” was inserted in the Patents (Amendments) Act, 2002. The intent behind inserting the same was to not reject computer programmes that may include 1. other things in addition to the computer programmes or 2. other things which are developed upon computer programmes.
However, computer programmes as such are not patentable.
Many court cases have shed light on this clause. One such case is TELEFONKTIEBOLAGET LM ERICSSON (PUBL) v. LAVA INTERNATIONAL LTD [CS (OS) 764/2015]. In this, the Hon’ble Delhi High Court held that “the inventions which result in technical advancement and have practical implementation or physical representation are patentable” (See paragraphs 89-94).
…..Each of the inventions claimed in the suit patent are not mere theoretical or abstract algorithms or mere mathematical or mental methods or even computer programmes per se as is being alleged by defendant.
……Prima facie, it appears that these inventions which have resulted in an improvement (technical advancement) in telecommunication technologies and have had a huge effect upon the manner in which these technologies function thereby resulting in practical implementation and actual physical representation.
…..Mere mention of an algorithm or a mathematical formula in a patent document should not be inferred to mean that the invention is nothing but an algorithm….
…..A bare perusal of the complete specification of all the 8 suit patents would prima facie reveal that the same actually relate to devices/apparatuses/components/mobile stations etc. and are thus, product patents which cannot be labelled as algorithm which is nothing but a set of instructions and is thus, theoretical in nature…TELEFONKTIEBOLAGET LM ERICSSON (PUBL) v. LAVA INTERNATIONAL LTD [CS (OS) 764/2015]
For example, a method improving latency in 5G communication may not be considered a computer programme per se or an algorithm as it has real-world implementation.
Section 3(l): a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
writings, music, works of fine arts, paintings, sculptures, computer programmes, electronic databases, pamphlets, lectures, drawings, architecture, engravings, lithography, photographic works, applied art, illustrations, maps, plans, sketches, topography, translations, adaptations, etc. are not patentable.
Note: These kinds of works are covered under the Copyright Act, 1957.
Section 3(m): a mere scheme or rule or method of performing mental act or method of playing game;
- method of learning language,
- method of playing chess,
- method of teaching,
- method of learning.
Section 3(n): a presentation of information;
Note: Any manner, means, or method of expressing information whether visual, audible, or tangible by words, codes, signals, symbols, diagrams, or any other mode of representation is not patentable.
- Railway time-table,
- 100 years calender
Section 3(o): topography of integrated circuits;
The topography of integrated circuits or the 3-dimensional configuration of the electronic circuit used in chips is not patentable.
This is so because protection for these has been covered under Semiconductor Integrated Circuit Layout Designs Act, 2000.
Section 3(p): an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.
- composition of Jamun, bitter-gourd, gurmar and eggplant for the treatment of diabetes,
- composition of methi as a tonic to bring down blood glucose levels,
- compositions comprising of Kala jeera or kalonji for increasing immune functions, and in the treatment of diabetes, hepatitis, and asthma,
- use of turmeric for wound healing.
Note: Traditional knowledge is already existing knowledge and is therefore not patentable. Patent Examiner generally looks for Traditional Knowledge Digital Library (TKDL) & other similar resources while examining such inventions.
Section 4: Inventions Relating to Atomic Energy Not Patentable
As per Section 4 of the Indian Patent Act, “No patent is granted in respect of an invention relating to atomic energy falling within sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962).”
Section 20(1) of the Atomic Energy Act: “no patents shall be granted for inventions which in the opinion of the Central Government are useful for or relate to the production, control, use or disposal of atomic energy or the prospecting, mining, extraction, production, physical and chemical treatment, fabrication, enrichment, canning or use of any prescribed substance or radioactive substance or the ensuring of safety in atomic energy operations.”
The updated list of “prescribed substances” under the Atomic Energy Act, 1962 can be accessed here. This list was published on April 28th, 2016.
First, the application is reviewed to determine whether it falls under the scope of the Atomic Energy Act. If the controller agrees, the application is forwarded to the Central Government for final review. The Central Government considers it and issues the necessary directions to the controller.
Whatever happens to the application, the applicant is informed of the same.
If the application is found to fall under the purview of the Atomic Energy Act, it is not processed further and no patent is granted. Otherwise, it proceeds for examination and grant like a normal patent application.
When we look with enough focus, we find that countries first secure their interests first. Patents deal with technologies ranging from simple to complex, from trivial to important. As a result, such provisions have been incorporated into each country’s patent laws.
For example, Articles 5 & 25 of the Chinese Patent Law, Article 53 of the European Patent Convention, and Article 32 of the Japanese Patent Act list subject matter which is not patentable in those countries.
The patentability requirements, which are novelty, inventive step, and industrial application, are more or less the same all over the world.
A significant change is observed in the 4th requirement which is what constitutes a “non-patentable subject matter” in a particular country.
For our country, it is the matter described in Sections 3 & 4 of the Patent Act. Initially, Section 5 was also there but it was omitted in the Patents (Amendment) Act, of 2005.
Apart from Sections 3 and 4 of the Indian Patent Act, Section 35 is also important for you as an applicant.
Section 35 relates to secrecy directions relating to inventions relevant for defence purposes. If your application falls under Section 35, then the grant of your application will either be delayed or there will be no grant at all.
We hope that this article has helped you understand what is not patentable in India. We have written many interesting articles like this, which you can explore here.