In our previous post, we saw the process for application for a patent in India along with the criteria for patentability. The Patent’s Act, 1970 (‘Patent Act’) also enunciates as to what are not considered as inventions. Section 3 of the Patent Act bars certain inventions from patentability and any invention which falls within the purview of Section 3 will lead to a refusal. In today’s post, we will briefly discuss about Section 3 of the Patent Act and what kind of inventions fall within its ambit.
Section 3 of the Patent Act begins with stating, “The following are not inventions within the meaning of this Act“. Let us have a look at all that the legislation considers as not inventions.
(a) An invention which is frivolous or which claims anything obviously contrary to well established laws is not an invention.
For Example: A machine that can slow down time; or a machine purporting to produce perpetual motion; or a machine which gives an output without any input, etc.
(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.
For Example: A method/ device to commit a robbery; or a machine to manufacture counterfeit currency notes; or a device for gambling; or a method of adulteration of food; or a method for cloning of humans, etc.
(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 is not an invention.
According to the sub-section of the Patent Act, a claim for discovery of scientific principle is not considered to be an invention, but a process of manufacture, based on the use of such principle, resulting in a substance or an article may be considered to be an invention. Further, a scientific theory is a statement about the natural world. These theories themselves are not considered to be inventions, no matter how radical or revolutionary an insight they may provide, since they do not result in a product or process. However, any practical application of such theory in the process of manufacture of an article or substance, may well be patentable. Additionally, the fact that a known material or article is found to have a hitherto unknown property is a discovery and not an invention. But if such discovery leads to the conclusion that the material can be used for making a particular article or in a particular process, then the article or process could be considered to be an invention. For example, the property of a particular known material to be able to withstand mechanical shock is a discovery and therefore not patentable, but a claim to a railway sleeper made of such material would not fall foul of this exclusion, and would be allowable if it passed the tests for novelty and inventive step.
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(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 is not an invention.
“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”.
Explanation to Section 3(d) further clarifies that salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance may be considered as may be considered to be the same substance and can be patentable only if they differ significantly in Properties with regard to efficacy. Further, Section 3(d) stipulates that an incremental invention, based upon an already known substance, having established medicinal activity shall be deemed to be treated as a same substance, and shall fall foul of patentability, if the invention in question fails to demonstrate significantly improved therapeutic efficacy with respect to the known substance.
Section 3(d) on its own is a subject of a separate post. The same shall be shared shortly.
(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 is not an invention.
An admixture resulting in synergistic properties is not considered as mere admixture. Hence, substances like soap, detergent, lubricants, may be considered as patentable according to the Patent Act. A mere aggregation of features must be distinguished from a combination invention. The existence of a combination invention requires that the relationship between the features or groups of features be one of functional reciprocity or that they show a combinative effect beyond the sum of their individual effects. The features should be functionally linked together which is the actual characteristic of a combination invention. In general, all the substances which are produced by mixing components or a process of producing such substances should satisfy the requirement of synergistic effect in order to be patentable. Synergistic effect should be clearly brought out in the description by way of comparison at the time of filing of the Application itself.
(f) The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way is not an invention.
According 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.
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(h) A method of agriculture or horticulture is not an invention.
For Example: A method of producing a plant, even if it involved a modification of the conditions under which natural phenomena would pursue their inevitable course (for instance a green house); or a method of producing improved soil from the soil with nematodes by treating the soil with a preparation containing specified phosphorathioates; or a method of producing mushrooms; or a method for cultivation of algae; or a method for removal of weeds, etc.
(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 is not an invention.
For example: A process of administering medicines orally, or through injectables, or topically or through a dermal patch; or a a stitch-free incision for cataract removal; or a method of cleaning plaque from teeth; or a method for vaccination, etc.
(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 are not inventions.
Microorganisms, other than the ones discovered from the nature, may be patentable. For instance, genetically modified microorganisms may be patentable subject to other requirements of Patentability. Plant varieties are provided protection in India under the provisions of the ‘Protection of Plant Varieties and Farmers’ Rights Act, 2002’.
(k) A mathematical or business method or a computer programme per se or algorithms are not inventions and hence not patentable.
Under this provision of the Patent Act, mathematical methods, business methods, computer programmes per se and algorithms are not considered as patentable subject matter. Mathematical methods are a particular example of the principle that purely abstract or intellectual methods are not patentable. Mathematical methods like method of calculation, formulation of equations, finding square roots, cube roots and all other similar acts of mental skill are therefore, not patentable. Similarly mere manipulations of abstract idea or solving purely mathematical problem/equations without specifying a practical application also attract the exclusion under this category.
Further, the term “Business Methods” involves whole gamut of activities in a commercial or industrial enterprise relating to transaction of goods or services. The claims drafted not directly as “business methods” but apparently with some unspecified means are held non-patentable. However, if the claimed subject matter specifies an apparatus and/or a technical process for carrying out the invention even partly, the claims shall be examined as a whole. When a claim is “business methods” in substance, it is not to be considered a patentable subject matter.
Furthermore, algorithms 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.
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(l) A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions is not an invention.
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 under the Patent Act. Such works fall within the domain of the Copyright Act, 1957.
(m) A mere scheme or rule or method of performing mental act or method of playing game is not an invention.
A mere scheme or rule or method of performing mental act or method of playing game, are excluded from patentability, because they are considered as outcome of mere mental process.
(n) A presentation of information is not an invention.
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. For example, a speech instruction means in the form of printed text where horizontal underlining indicated stress and vertical separating lines divided the works into rhythmic groups is not patentable. For instance, railway time table, 100 years calendar etc.
(o) Topography of integrated circuits is not an invention.
Since protection of Layout Designs of Integrated Circuits is governed separately under the Semiconductor Integrated Circuit Lay-out Designs Act, 2000, three-dimensional configuration of the electronic circuits used in microchips and semiconductor chips is not patentable.
(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 is not an invention.
Traditional Knowledge, being knowledge already existing, is not patentable. An example is the antiseptic properties of turmeric for wound healing. Another example is the pesticidal and insecticidal properties of neem. The Examiner conducts an investigation by using the Traditional Knowledge Digital Library (TKDL) and other resources to decide as to whether the claimed subject matter falls within the purview of this provision.
The above information has been reproduced from the ‘Manual of Patent Practice and Procedure’ and is strictly for the knowledge of the general public. The same can be readily accessed on the Intellectual Property website.