BUSINESS

Inventions that are patentable

Categories of eligible inventions

New compounds, new compositions

A process for the production of new compounds, new materials, new compositions (formulations)

Improvement of an existing process for the production of known compounds, known materials, known composition (formulations)

Synergistic compositions

Medical device/ improved medical device

New machine/ device

Improved machine/ device

This is the third in a series of occasional articles by N. R. Subbaram in the form of questions and answers on Intellectual Property Rights and Patents.

IN INDIA inventions eligible for patents should fit into any one or more categories specified below besides satisfying all the patentability criteria:

It is to be noted that applications for patents including claims for new products in pharmaceuticals and agrochemicals can be filed. Such applications will not be examined before January 1, 2005 or till the date the Patents Act 1970 is further amended allowing protection for such products and brought into force , whichever date is earlier.

What inventions are not patentable under the Indian Patents Act?

Inventions for which no patents can be secured are stipulated in Sections 3,4 & 5 of the Indian Patents Act 1970 even though they satisfy the patentability criteria .

According to Section 3 of the Act, the following inventions are not patentable :

(i) An invention that is frivolous or that claims anything obviously contrary to well established natural laws. Example: Machines / devices that violate the Third Law of Thermodynamics.

(ii) An invention, the primary or intended use or commercial exploitation of which will be contrary to law or morality or which causes serious prejudice to human, animal or plant life or health or to the environment. Example: A process for the preparation of a beverage by the incorporation of a substance that is likely to and / or will cause cancer but increases the nourishment value of the beverage. If the use of such substance is banned by the Government, the invention will not be patentable. Similarly inventions which are injurious to the health of animals and plants as well as those which adversely affect the environment will not be patentable.

(iii) 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 Example:. (i) Raman Effect (ii) For the finding of any pharmaceutical activity (on any other useful activity) of any known plant or parts thereof.

(iv) The mere discovery of a 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. Example: New use of known turmeric powder as an agent for treating AIDS.

(v) 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. Example: A detergent composition consisting of an active ingredient and a carrier wherein the carrier does not possess any activity (inert)) and does not play any part in the activity of the composition .

(vi) The mere arrangement and rearrangement or duplication of features of known devices, each functioning independently of one another in a known way. Example:An umbrella comprising an electric motor, having a fan fitted on its shaft and housed at the top of the umbrella arranged to blow air downwardly and means for the supply of electricity for running the motor.

(vii) A method of agriculture or horticulture. Example: A method of spraying insecticides on a field to prevent insects from harming the plants.

(viii) Any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of humans to render them free of disease to increase their economic value or that of their products. Example: A process for treatment of human suffering from malignant tumor by conducting an operation to remove the tumour.

(ix) Plants and animals other than microorganisms in whole or any part thereof including seeds varieties and species and essentially biological processes for production or propagation of plants and animals. Example : A new plant or an existing plant and transgenic animals.

(x) A mathematical or business method or a computer program per se or alogrithams. Example: Computer software.

(xi) A literary, dramatic, musical, or artistic work or any other aesthetic creation whatsoever including cinematographic works and television production. Example: A text book in history.

(xii) A mere scheme or rule or method of performing a mental act or method of playing a game. Example: Rules for an indoor game.

(xiii) Presentation of information. Example: Presentation of a paper through MS Power Point.

(xiv) Topography of integrated circuits.

(xv) An invention which, in effect, is a traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components. Example: A pharmaceutical composition containing turmeric as the active pharmaceutical ingredient useful for wound healing. This is not a subject matter for the grant of a patent as such use is already known in the Indian traditional system of medicine.

In addition to the provisions stipulated in Section 3, the Patents Act 1970 stipulates in Sections 4 and 5 other inventions that are not patentable.. They are described below:

(a)Inventions relating to atomic energy: Section 4 of the Act stipulates that no patent shall be granted in respect of an invention relating to atomic energy falling within Section 20 (1) of the Atomic Energy Act 1962.

(b) Inventions relating to chemical products (substances)

Section 5 of the Patents Act 1970 stipulates that no patents can be granted

(i) for substances intended for use or capable of being used as food, or as medicine or drug and (ii) substances prepared or produced by a chemical process.

The substances include alloys, optical glass, semiconductors and inter metallic compounds.

In the case of the above categories of inventions only the process for their preparation is allowed.

Therefore, if by an inadvertent error, a patent is granted for any one or more of the items mentioned above, that patent can be cancelled provided appropriate evidence is produced. For this purpose, a constant, regular and systematic review of the Gazette of India , Part III Section 2 (published every Saturday) is very important and essential.

(The author is former head of the Intellectual Property Management Division of CSIR)

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