As per our earlier classes the statue (Patent Act 1970) has
defined what can be patentable and what cannot;
Section 2(1) (j) defines what is an Invention and the entire
patent Act uses this term Invention for grant of patent or any
other purpose in the Act.
3.
Invention Means a new product or process involving an inventive
step and capable of Industrial application.
4.
Patents Act 1970
Patentable inventions
any product or process which is :
novel
not obvious to a person skilled in the art
capable of industrial application
The Act also provide what cannot be patentable Under Section 3
and 5.
5.
Invention must
relates to a Process or Product or both
be new (Novel)
involves an inventive step
be Capable of industrial application
not fall under Section 3 and 4
6.
It has been inserted into the patent Act, 1970 through patents
amendment Act, 2002.
It was introduced to comply with TRIPs regulations and provide
a proper definition to the term Invention which is paramount
importance for the patent law.
7.
Anti-discrimination provisions [Art. 27.1]
No discrimination in the availability or enjoyment of patent
rights on the basis of field of technology , place of invention or
location of manufacture of product
An attempt to harmonize the Patentable subject matter through
out the member countries of TRIPs.
Provided flexibilities to member countries on certain subjects
like:-
Plant/animal exception in 27.3(b), but microorganisms must be
eligible
Exception for surgical/diagnostic/therapeutic methods practiced
on the human/animal body [27.2]
Exclusions where commercialization/use of technology prohibited
as being necessary to protect public order/morality/protection of
environment [note: cannot not patent but then allow use of the
prohibited technology]
8.
Each Country law has its own definition. Some countries dont
grant (Netherlands, Switzerland)
Legislatures have difficulty generalising (often resorting to
lists)
(1) Every new discovery or invention, in all departments of
industry, confers on its authorthe exclusive right of working for
his own profit the said discovery or invention
(2) The following shall be considered as new inventions or
discoveries:-
The invention of new industrial products;
The invention of new methods, or the new application of known
methods, or obtaining an industrial product or result.
(3) The following shall not be patentable:-
Pharmaceutical compositions or medicines of all kind
Schemes and combinations relating to credit and finance
11.
(1) Exclusive privileges may be granted for every new discovery
or invention having for its object a. A new product of industry; or
b. A new means of production; or c. A new method of production
(2) No privileges can be granted for preparations of food,
beverages, and medicines, nor for discoveries, inventions or
improvements which cannot be worked for reasons of public health,
morals or safety, or as being contrary to the general interest of
the state, according to existing regulations
(5) Scientific principles, or purely scientific theorems,
cannot be patented
Those of a mere theoretical nature; Inentions not relating to
the manufacture of material objects; Scientific principles or
purely scientific theorems (Argentine Republic; Brazil; France (art
30); Italy; Turkey; Venezuela; Italy; Austria; Canada (s.6) ;
Finland; Russia (art 80); Spain
Contrary to laws (Argentine Republic; Austria; Brazil; British
Guiana; Colombia; Finland; France; Germany; Italy; Luxembourg;
Mexico; Portugal; Sweden; Turkey; Venezuela)
Contrary to public health or safety (Austria; Brazil; Colombia
(art 8) ; Finland; France; Italy; Mexico; Portugal (art 632);
Russia (art 87); Turkey; Venezuela)
Prejudicial or Inconvenient (British Guiana; Ceylon (s.25);
India (s. 16); Trinidad; GB; Mauritius (s. 17); New Zealand)
Implements of war (Russia)
Detriment to Government revenues (Russia )
13.
Subject to the provisions of paras 2 & 3, patents shall be
available for any inventions , whether products or processes, in
all fields of technology , provided that they are new, involve an
inventive step and are capable of industrial application . Subject
to para 4 of Art 65, para 8 of Art 70 and para 3 of this Article,
patents shall be available and patent rights enjoyable without
discrimination as to the place of invention, the field of
technology and whether products are imported or locally
produced
14.
US , s.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,
Japan , Art 2(1): a highly advanced creation of technical ideas
by which the law of nature is utilised
Mexico Art. 15: Any human creation that allows matter or energy
existing in nature to be transformed for utilization by man for the
satisfaction of his specific needs shall be considered an
invention.
Bangui Accord. Article 1 of Annex 1 invention means an idea
that permits a specific problem in the field of technology to be
solved in practice
15.
US (Judicial (Case law)): laws of nature, physical phenomena,
abstract ideas ( Chakrabarty / Bilski )
EPC, Art 52: discoveries, scientific theories, mathematical
methods; aesthetic creations; schemes, rules and methods for
performing mental acts, playing games or doing business, and
programs for computers; presentation of information;
Eurasian Patent Convention 1994: (EPC+) methods of economic
organization and management, symbols, schedules and rules,
algorithms; topographies of integrated circuits and projects and
plans for structures and buildings and for land development and
solutions concerning solely the outward appearance of manufactured
goods and aimed at satisfying aesthetic requirements.
16. TRIPS Article 27
Patentable Subject Matter
Subject to the provisions of paragraphs2 and 3, patents shall
be available for any inventions, whether products or processes, in
all fields of technology, provided that they are new, involve an
inventive step and are capable of industrial application.
[1] Subject to paragraph4 of Article65, paragraph8 of Article70
and paragraph3 of this Article, patents shall be available and
patent rights enjoyable without discrimination as to the place of
invention, the field of technology and whether products are
imported or locally produced.
Members may exclude from patentability inventions, the
prevention within their territory of the commercial exploitation of
which is necessary to protect ordrepublic or morality, including to
protect human, animal or plant life or health or to avoid serious
prejudice to the environment, provided that such exclusion is not
made merely because the exploitation is prohibited by their
law.
17. TRIPS Article 27 Patentable Subject Matter 3. Members may
also exclude from patentability: (a) diagnostic, therapeutic and
surgical methods for the treatment of humans or animals; (b) plants
and animals other than micro-organisms, and essentially biological
processes for the production of plants or animals other than
non-biological and microbiological processes. However, Members
shall provide for the protection of plant varieties either by
patents or by an effective suigeneris system or by any combination
thereof. The provisions of this subparagraph shall be reviewed four
years after the date of entry into force of the WTO Agreement. [1]
For the purposes of this Article, the terms "inventive step" and
"capable of industrial application" may be deemed by a Member to be
synonymous with the terms "non-obvious" and "useful"
respectively.
18.
Frivolous, Contrary To Natural Laws
Examples 1) Machine that gives more than 100% performance 2)
Perpetual machine
(b) Contrary To Public Order Or Morality, Prejudice To Human,
Animal Or Plant Life Or Health Or To The Environment;
Examples 1) Gambling machine, 2) Device for house-breaking , 3)
Biological warfare material or device, 4) weapons of mass
destruction 5)Terminator gene technology, 6)Embryonic stem
cell
(c) Mere Discovery Of Scientific Principle, Abstract Theory,
Living Thing Or Non- living Substances
Examples:
Newtons Laws
Superconducting Phenomenon as such
Property of certain material to withstand mechanical shock
Discovery of micro-organism
Discovery of natural gas or a mineral
19. (d) Mere Discovery Of New Form, New Property, New Use Of A
Known Process, Machine Or Apparatus (EFFICACY) (e) Mere Admixture
(SYNERGY) (f) Mere Arrangement, Re-arrangement, Duplication of
known devices. (g) Omitted (Testing Methods) (h) Method Of
Agriculture Or Horticulture; (i) Method Of Treatment. (j) Plants,
Animals, Including Seeds Varieties, Species, Biological Processes.
Exception: Microorganisms
20. (k) Mathematical Or Business Method Or A Computer Program
Per Se Or Algorithms; (l) Literary, Dramatic, Musical Or Artistic
Work, Other Aesthetic Work (m) Mere Scheme, Rule, Method Of
Performing Mental Act, Playing Game; (n) A Presentation Of
Information; (o) Topography Of Integrated Circuits; (p) Traditional
Knowledge
21.
22.
That it has not been anticipated by publication in any document
any where in the world or
used in any country or
prior claimed in an application for patent in India or
form part of the knowledge, oral or otherwise, available within
any local or Indigenous community in India or elsewhere before the
date of filing of patent application or date of priority, that is,
the subject matter has not fallen in the public domain or that it
does not form part of the state of the art .
23.
In re Nuijten - Electrical signals deemed not patentable
In re Bilski - Managing weather risk in commodity trading
In re Comiskey - Mandatory arbitration of legal documents Held
patentable subject matter