Amrendra Kumar Ajit(Assit.Professor of Law)

National Law University Orissa, Cuttack India-753008

©NLUO2011

Only fulfillment of three prerequisites (N IS U) are not enough for granting the patent to an invention.

An invention must not be come under non-patentable criteria .

(N+IS+U)+PSM= Patent

. Municipal laws relating to patent provide the list of non-patentable invention.

.No definite criteria for exclusion.

.But list may be categorised on three criteria…. (i) matters which are incapable of being the subject of

legal monopoly, eg. like an invention contrary to established natural

law.

(ii) matters excluded by policy or morality eg. Invention relating to atomic energy and

human cloning.

(iii) Matters which are protected by others form of IPR eg. Copyright.

IN EPC + UKART.52(2),ART.1(2)n(3)-discoveries, scientific theories and

mathematical methods- aesthetic creations;- schemes, rules and methods for

performing mental acts, playing games or doing business, and programs for computers

IN USA - no such list in US CODE 35. - depend upon judicial precedent and specific legislation. O’ Reilly vs Moore 56 US (15HOW)6,132(1853) Held- Patent can’t be granted on plant and animal due to… i) it will provide exclusive right ii) unjust enrichment iii) Lockean labour philosophy

- presentations of information.

- Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body

Diamond vs Chakraborty 447 US 303(1980) issue- patent for genetically engineered bacterium cap- able breaking down crude oil. - patent was granted as human made

“manufacture” or “comp- osition” of matter. Anything under the sun made by

man is patentable. - Chimera issue

ART.53 - inventions the publication or

exploitation of which would be contrary to "ordre public" or morality

- plant or animal varieties or essentially biological processes for the production of plants or animals; this provision does not apply to microbiological processes or the products thereof.

Now excluded matter .products of nature .laws of nature .printed matter .atomic weapons (under the Atomic Energy Act) .mental step

Sections 3 and 4 of The Patent Act 1970

sec 3(a)- Frivolous inventions or contrary to natural laws.

eg. a perpetual motion machine:- as it contravene the laws of physics

b) 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 . For example,o Gambling machine, device for house-breaking,o Biological warfare material or a device, WMDo Onco- mouse case, embryonic stem cello Terminator gene technology,

C ) Mere Discovery of a Scientific Principle or Formulation of an Abstract Theory or discovery of any living thing or discovery of non–living substance occurring in

natureDiscovery adds to the human knowledge by

disclosing something ,not seen before, whereas,Invention adds to human knowledge by suggesting

an act to do which results in a new product or new process

e.g. Archimedes Principle, Superconducting Phenomenon etc as such – not patentable ,However, An apparatus/method for technological application may be patentable

A property of certain material to withstand mechanical shock is not patentable, but A claim to a railway-sleeper made of that material may be patentable

Discovery of a substance, freely occurring in nature is not patentableHowever,if that substance is first to be isolated from its surrounding and a process for obtaining it is developed , the process may be patentable

Discovery of micro-organism, Discovery of natural gas or a mineral, not patentable

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.

3 d : ExplanationFor the purposes of this clause,salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixture of isomers,

complexes, combinations, and other derivatives of known substances shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.

eg. New use of Aspirin in heart ailments, Mere new uses of Neem

e) A substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance

For example: Not patentable-1) Paracetamol (Antipyretic) +Brufen (analgesic)

+ =

= A drug (antipyretic & analgesic)

2) A mixture of sugar and some colorants in water toproduce a soft drink is mere admixture

But, a mixture resulting into synergistic properties of mixture of ingredients however, may be patentable e.g Soap, Detergents,lubricantsssss etc

f) The mere arrangement or rearrangement

or duplication of known devices each

functioning independently of one another

in a known way,

eg. Workshop improvement, combination of known integers

Timer +( watch +TV+ street light)= No Patent

g) Ommited in 2002 (a method or process of testing applicable during the process of manufacture )

h) A method of agriculture or horticulture;

i) Any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of

human beings or a similar treatment of animals to

render them free of disease or to increase their economic value or that of their products

For example: o Removal of cancer tumor

o Removal of dental plaque and carries,o Surgical processes, any process relating to therapy,

o Method of vaccination, o Method of therapy carried out on materials

temporarily removed from the body for example, blood transfusion

However , Method performed on tissues or fluids permanently

removed from the body Surgical,therapeutic or diagnostic Apparatus or instrument

are not excluded from patentability

j) Plants & animals in whole or any part thereof other than micro- organisms, but including seeds, varieties and species and essentially biological process for production or propagation of plants & animals

For example,Clones and new varieties of plants: Not patentable

Microorganisms, per se: Not patentable, If human intervention in the process plays a

significant role- not an essentially biological process

A process for the production of plants or animals if it consists entirely of natural phenomena such as crossing or selection”- essentially biological

k) A mathematical or business method or

computer programe per se or alogrithms;

, an algorithm is a type of effective method(related to mathematics, computing, linguistics, and related disciplines) in which a definite list of well-defined instructions for completing a task, when given an initial state, will proceed through a well-defined series of successive states, eventually terminating in an end-state

A literary , dramatic , musical or artistic work or any other aesthetic creation,

m) A mere scheme or rule or method of performing mental act or method of playing game,

eg. Rules of cricket (20-20 rule), football etc.

n) Presentation of information

O) topography of integrated circuits,

p) An invention which, in effect, is the Traditional Knowledge

or an aggregation or duplication of known properties of traditionally known component or components

+ =

SEC.4 – Invention relating to atomic energy can’t be patented.

Invention relating to atomic has been described in sec.20(1) of the Atomic Energy Act,1962.

Study Material- Intellectual Property Law (Lionel Bently and Brad

Sherman)-

Chapter 17,18,19-- Pg. 362-456

.Intellectual Property (David Brainbridge)

Pg.– 338-375

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