Tuesday, 4 August 2015


What is a Patent

A patent is an exclusive right granted by a country to the owner of an invention to make, use, manufacture and market the invention, provided the invention satisfies certain conditions stipulated in the law.

       The grant of first patent can be traced as far back as 500 B.C. It was the city dominated by gourmands, and perhaps the first, to grant what we now-a-days call patent right to promote culinary art. For it conferred exclusive rights of sale to any confectioner who first invented a delicious dish. 
       As the practice was extended to other Greek cities and to other crafts and commodities, it acquired a name ‘monopoly’, a Greek Portmanteau word from mono (alone) and polein (sale).
       History shows that in 15th Century in Venice there had been systematic use of monopoly privileges for inventors for the encouragement of invention. Utility and novelty of the invention were the important considerations for granting a patent privilege. The inventors were also required to put their invention in commercial use within a specified period.
       By the late 15th Century, the English monarchy increasingly started using monopoly privilege to reward court favourites, to secure loyalty and to secure control over the industry but these privileges were not used to encourage inventions.
       In 16th Century the German princes awarded inventors of new arts and machines and also took into consideration the utility and novelty of inventions.
       The origin of the Indian Patent System could be traced to the Act of 1856 granting exclusive privileges to inventors. The patent regime at the time of Independence was governed by the Patents and Designs Act, 1911, which had provisions both for product and process patents.

       Exclusivity of right implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder.
       This right is available only for a limited period of time.
       However, the use or exploitation of a patent may be affected by other laws of the country which has awarded the patent.
       These laws may relate to health, safety, food, security etc.
       Further, existing patents in similar area may also come in the way.
       A patent in the law is a property right and hence, can be gifted, inherited, assigned, sold or licensed.
       As the right is conferred by the State, it can be revoked by the State under very special circumstances even if the patent has been sold or licensed or manufactured or marketed in the meantime.
       The patent right is territorial in nature and inventors/their assignees will have to file separate patent applications in countries of their interest, along with necessary fees, for obtaining patents in those countries. 

Term of the Patents
       A patent is an official document given to an inventor by the government allowing him to exclude anyone else from commercially exploiting his invention for a limited period which is 20 years at present. (term of patent in case of international applications filed under the PCT designating India, shall be twenty years from the international filing date accorded under the Patent Cooperation Treaty.)

Object of  Patent Law
       As per the Supreme Court, the object of Patent Law is to encourage scientific research, new technology and industrial progress.
       Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period, stimulates new inventions of commercial utility.
The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, which, after the expiry of the fixed period of the monopoly, passes into the public domain.

       A patent is granted for an invention which may be related to any process or product.
       An invention is different from a discovery.
       Discovery is something that already existed but had not been found.
       Not all inventions are patentable.
       An invention must fulfill certain requirements known as conditions of patentability.
       The word “invention” under the Patents Act 1970 means “a new product or process involving an inventive step and capable of industrial application.
       The Supreme Court has held that an Invention, as is well known, is to find out some thing or discover some thing not found or discovered by anyone before.
       It is not necessary that the invention should be any thing complicated.
       The essential thing is that the inventor was first to adopt it.
       The principal therefore, is that every simple invention that is claimed, so long as it is something which is novel or new, it would be an invention and the claims and specifications have to be read in that light. 

Conditions of Patentability
       A novel invention is one, which has not been disclosed, in the prior art where prior art means everything that has been published, presented or otherwise disclosed to the public on the date of patent (The prior art includes documents in foreign languages disclosed in any format in any country of the world.)
       This means that there should not be any prior disclosure of any information contained in the application for patent (anywhere in the public domain, either written or in any other form, or in any language) before the date on which the application is first filed i.e. the 'priority date'. 

       Novelty  (Newness):
       There would be no novelty/newness if there has been prior publication and prior use of same or an identical invention. For instance, the recent grant of patent in USA to turmeric products was attacked on this ground. The Indian Council of Scientific & Industrial Research (CSIR) challenged, successfully, the grant of patent on the plea that the patent could not  be granted as there was no novelty/newness in the invention. Also, that what was patented was already published in Indian texts and use of turmeric preparations has been made in our country since times immemorial. 
       Ram Narain Kher v. M/s Ambassador Industries, AIR 1976 Del 87 (The Air Cooler Case – claim that there would be 25% additional advantage of added cool air by fixing the fan at the top of the cooler than in the customary way hitherto known in the front of the cooler)
       The Delhi High Court has held that when an invention is not itself new, at the time the patent is granted to a party, it is essential that the party claiming patent should specify what particular features of his device distinguish it from those which had gone before and show the nature of the improvement which is said to constitute the invention.
       A person claiming a patent has not only to allege the improvement in art in the form but also that the improvement effected a new and very useful addition to the existing state of knowledge.
       The novelty or the invention has to be succinctly stated in the claim

       Inventive Step (Non-obviousness) 
       Inventive step is a feature of an invention that involves technical advance as compared to existing knowledge or having economic significance or both, making the invention non obvious to a person skilled in art.
        Here definition of inventive step has been enlarged to include economic significance of the invention apart from already existing criteria for determining inventive step.
       An invention shall not be considered as involving an inventive step, if, having regard to the state of the art, it is obvious to a person skilled in the art.
       The term "obvious" means that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art, i.e. something which does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the Art.
       For this purpose a “person skilled in the art” should be presumed to be an ordinary practitioner aware of what was general common knowledge in the relevant art at the relevant date. In some cases the person skilled in the art may be thought of as a group or team of persons rather than as a single person. 

       Industrial Applicability (utility) 
       An invention is capable of industrial application if it satisfies three conditions, cumulatively:
       can be made;   
       can be used in at least one field of activity;
       can be reproduced with the same characteristics as many times as necessary.

  1. An invention to be patentable must be useful. (If the subject matter is devoid of utility it does not satisfy the requirement of invention.)
  2. For the purpose of utility - the element of commercial or pecuniary success has no relation to the question of utility in patent law.
3.     The usefulness of an alleged invention depends not on whether by following the directions in the complete specification all the results not necessary for commercial success can be obtained, but on whether by such directions the effects that the application/patentee professed to produce could be obtained.
  1. The meaning of usefulness is therefore useful for the purpose indicated by the applicant or patentee whether a non-commercial utility is involved.
  2. The usefulness of the invention is to be judged, by the reference to the state of things at the date of filing of the patent application, if the invention was then useful, the fact that subsequent improvement have replaced the patented invention render it obsolete and commercially of no value, does not invalidate the patent.
  3. Speculation or imaginary industrial uses are not considered to satisfy the industrial application requirement.

Non Patentable Subject Matter
       The following are not inventions within the meaning of Section 3 of the Patents Act, 1970:
  1. an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
  2. 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;
  3. the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature;
  4. 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 property or mere 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; Explanation to clause (d) clarifies that salts, esters, 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.
  5. 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;
  6. the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
  7. a method of agriculture or horticulture;
  8. 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;
  9. 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;
  10. a computer programme per se other than its technical application to industry or a combination with hardware;
  11. a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
  12. a mere scheme or rule or method of performing mental act or method of playing game;
  13. a presentation of information;
  14. topography of integrated circuits;
  15. an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.

Section 4 prohibits the grant of patent in respect of an invention relating to atomic energy falling within Subsection (1) of Section 20 of the Atomic Energy Act, 1962.
  1. Section 20 of the Atomic Energy Act, 1962 contains special provision relating to inventions. Under Section 20 (1) of the Atomic Energy Act, 1962 “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”

Whether Genetically Modified Organisms can be Patented?
       Diamond, Commissioner of Patents and Trademarks v. Chakrabarty (1980)
       Chakrabarty applied for a patent for a genetically-engineered bacteria that could eat all the different components of oil. There were three parts to the patent:
       Method for producing the bacteria,
       Composition of a slurry of bacteria and carrier liquids, and
       The bacteria themselves.
       The USPTO allowed the first two claims, but denied the third. Chakrabarty appealed.
       The USPTO looked to 35 U.S.C. §101 and found that living things are not patentable subject matter.
       §101 requires that an invention be manufactured or a composition of matter (or a machine, or a process). Living things aren't manufactured, they are 'grown', and they aren't composition of matter, they are living organisms. So they didn't fit under any of the definitions of things that are patentable.
       The USPTO had a rule saying that things like new strains of plants (aka 'products of nature') were not patentable.
       Chakrabarty argued that the genetic engineering he did on the bacteria was a form of manufacture, therefore it met the standard.
       The Court of Customs and Patent Appeals reversed and awarded the patent.
       The USPTO appealed.
       The Supreme Court affirmed.
       The US Supreme Court noted that laws of nature, physical phenomena and abstract ideas cannot be patented.
       That includes plants and minerals you find in the environment, as well as mathematical formulas.
       However, the Court found that genetically-engineered organisms fall within the definition of manufactured.
       "Chakrabarty's claim is not to a hitherto unknown natural phenomenon, but to a non-naturally occurring manufacture or composition of matter. His discovery is not nature's handiwork, but his own, accordingly it is patentable subject matter under 35 U.S.C. §101."
       Basically, 'products of nature' are not patentable because the discoverer isn't really an 'inventor' they didn't do anything themselves, they just found something that preexisted. However, that argument doesn't apply to Chakrabarty because he did work to create the new bacteria.
       The Court also found that bacteria could technically meet the definition of a composition of matter.
       The Court noted that Congress had in the past excluded certain inventions from patent (like nuclear bombs), so if Congress didn't want people patenting genetically-modified organisms they were free to change the law.
       The Court felt that the patent system should be read broadly to encompass new fields that Congress didn't foresee when they wrote §101.
       The Plant Protection Act and the Plant Variety Protection Act (see 25 U.S.C. §§161-164) were passed by Congress specifically to create a patent regime that would cover living things, implying that Congress felt that the general patent system wouldn't cover living things. If bacteria (and presumably plants) are covered by §101, then doesn't §§161-164 become superfluous? The Court considered this argument, but rejected it.

No comments:

Post a Comment