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.
History
• 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.
Conditions
• 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.
Invention
• 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
• Novelty
• 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.
Patentable
- An invention to be
patentable must be useful. (If the subject matter is devoid of
utility it does not satisfy the requirement of invention.)
- 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.
- The meaning of
usefulness is therefore useful for the purpose indicated by the
applicant or patentee whether a non-commercial utility is involved.
- 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.
- 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:
- an
invention which is frivolous or which claims anything obviously contrary
to well established natural laws;
- 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;
- 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;
- 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.
- 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 or re-arrangement or duplication of known
devices each functioning 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 micro-organisms but
including seeds, varieties and species and essentially biological
processes for production or propagation of plants and animals;
- a
computer programme per se other than its technical application to industry
or a combination with hardware;
- a
literary, dramatic, musical or artistic work or any other aesthetic
creation whatsoever including cinematographic works and television
productions;
- a
mere scheme or rule or method of performing mental act or method of
playing game;
- a
presentation of information;
- topography
of integrated circuits;
- 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.
- 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.
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