INVENTIONS NOT PATENTABLE

INVENTIONS NOT PATENTABLE :

Under section 3 of the Patents Act, 1970, the following are not inventions and hence are not considered to be patentable. However, examples given are mere illustrations and may not be conclusive on the subject. Objective decisions may be taken on case to case basis.

(a) An invention which is frivolous or which claims anything obviously contrary to well established laws is not an invention.

Some examples of a frivolous nature and contrary to natural laws are:-

• A machine purporting to produce perpetual motion.

• A machine alleged to be giving output without any input.

• A machine allegedly giving 100% efficiency.

(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.

Some examples are:

a. Any device, apparatus or machine or method for committing theft/burglary.

b. Any machine or method for counterfeiting of currency notes.

c. Any device or method for gambling.

d. An invention the use of which can cause serious prejudice to human beings, plants and animals.

e. Inventions, the intended use or commercial exploitation of which is found to be injurious to public, animal or plant life or health, such as, a method of adulteration of food.

f. An invention, the primary or intended use of which is likely to violate the well accepted and settled social, cultural, legal norms of morality, e.g. a method for cloning of humans.

g. An invention, the primary or proposed use of which would disturb the public order e.g. a device for house-breaking.

h. However, if the primary or intended purpose or commercial exploitation of a claimed invention is not causing serious prejudice to human, animal or plant life or health or to the environment, such subject matter may be considered to be an invention and may be patentable. For instance, a pesticide.

(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.

(i) A claim for discovery of scientific principle is not considered to be an invention, but such a principle when used with a process of manufacture resulting in a substance or an article may be considered to be an invention.

(ii) 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, if the theory leads to practical application in the process of manufacture of an article or substance, it may well be patentable. A claim for formulation of abstract theory is not considered to be an invention. For example, 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 the 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.

(iii) Finding out that a particular known material is able to withstand mechanical shock is a discovery and therefore not patentable, but a claim to a railway sleeper made of the material would not fall foul of this exclusion, and would be allowable if it passed the tests for novelty and inventive step. Similarly, finding of a new substance or micro-organism occurring freely in nature is a discovery and not an invention.

(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.

Section 3(d) provides an explanatory clause to make it more clear which reads as follows:

“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”.

According to this provision, the following are not inventions and hence not patentable:

(a) mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance;

(b) the mere discovery of any new property of a known substance;

(d) the mere use of a known process unless such known process results in a new product or employs at least one new reactant;

(e) the mere use of a known machine or apparatus.

The explanation to Section 3(d) further clarifies that the salts, esters, ethers, polymorphs, metabolites, pure
form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known
substance may be considered to be the same substance. It however states that such salts, esters, ethers,
polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations
and other derivatives of such known substance may be considered as patentable only if they differ
significantly in properties with regard to efficacy.

The Examiner on a case to case basis applies the test as to what constitutes such salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives to differ significantly in properties with regard to efficacy from the known substance. The complete specification may bring out clearly and categorically in the description, as to how the subject matter differs significantly in properties with regard to efficacy from the known substance thereof, at the time of filing of the application or subsequently by way of an amendment of specification under section 59.

In a recent case in relation to a pharmaceutical substance, the Madras High Court held that efficacy means therapeutic efficacy. It was held that:

going by the meaning for the word “efficacy” and “therapeutic”… what the patent applicant is expected to show is, how effective the new discovery made would be in healing a disease having a good effect on the body? In other words, the patent applicant is definitely aware as to what is the “therapeutic effect” of the drug for which he had already got a patent and what is the difference between the therapeutic effect of the patented drug and the drug in respect of which patent is asked for.”

“Due to the advanced technology in all fields of science, it is possible to show by giving necessary comparative details based on such science that the discovery of a new form of a known substance had resulted in the enhancement of the known efficacy of the original substance and the derivatives so derived will not be the same substance, since the properties of the derivatives differ significantly with regard to efficacy.” (Novartis AG Vs. Union of India, W.P. No. 24760/06).

In the case of Novartis AG v. Union of India & Ors( Civil Appeal Nos. 2706-2716 OF 2013 Arising out of SLP(C) Nos. 20539-20549 OF 2009, decided by Supreme Court on 1st April, 2013, AIR 2013 SC 1312, 1313), the Supreme Court held that the primary purpose of section 3(d), as is evidenced from the legislative history, is to prevent “evergreening” and yet to encourage incremental inventions. “Evergreening” is a term used to label practices that have developed in certain jurisdictions wherein a trifling change is made to an existing product, and claimed as a new invention. The coverage/protection afforded by the alleged new invention is then used to extend the patentee’s exclusive rights over the product, preventing competition. By definition, a trifling change, or in the words of the section “a mere discovery of a new form of a known substance”, can never ordinarily meet the threshold of novelty and inventive step under clauses (j) and (ja) of section 2(1). An invention cannot be characterized by the word “mere”. The word “invention” is distinct from the word “discovery”.

(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, e.g., a soap, detergent, lubricant and polymer composition etc, and hence may be considered to be patentable.

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 mere admixing, 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. The subsequent submissions regarding synergism can be accepted in a reply to the office action as a further support of synergy. However, such submitted data may be incorporated in the Specification, subject to the provisions of Section 59.

(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.

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. Mere collocation of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent. (Biswanath Prasad Radhey Shyam Vs. Hindustan Metal Industries (1979) 2 SCC, 511).

A new and useful application of an old principle may be good subject-matter. An improvement on something known may also afford subject-matter; so also a different combination of matters already known. A patentable combination is one in which the component elements are so combined as to produce a new result or arrive at an old result in a better or more expeditious or more economical manner. If the result produced by the combination is either a new article or a better or cheaper article than before, the combination may afford subject-matter of a patent. (Lallubhai Chakubhai Vs. Chimanlal and Co. (AIR 1936 Bom 99.)

An invention claiming a mere juxtaposition of known devices in which each device functions independently is not considered patentable. Merely placing side-by-side old integers so that each performs its own function independently of the others is not a patentable combination. [As for example: a flour mill provided with sieving means].

However, where the old integers when placed together have some working interrelation, producing a new or improved result, then there could be a patentable subject matter in the working interrelation brought about by the collection of the integers.

When two or more features of an apparatus or device are known, and they are juxtaposed without any interdependence on their functioning, they should be held to have been already known. (Rampratap v. Bhabha Atomic Research Center, 1976 IPLR 28 P. 35), e.g., an umbrella with fan (388/Bom/73), bucket fitted with torch, clock and transistor in a single cabinet. These are not patentable, since they are nothing but mere arrangement and rearrangement of items without having any working interrelationship between them and are devices capable of functioning independently of each other.

As for instance, in the case of an application for a patent in respect of an apparatus for producing metallic bellows, the hydraulic machine and the roll forming machine disclosed therein were functioning as separate machines independently of each other and as such had no novel feature. Hence, there is no invention when a claim is made on known types of hydraulic forming and roll forming machines functioning independently of each other.

A new combination may be the subject matter of a patent although every part of the combination, per se, is old, for here the new article is not the parts themselves but the assembling and working of the parts, together. The merit of a new combination very much depends upon the result produced. Where a slight alteration turns that which was practically useless into what is useful and important, it is fit subject matter for a patent.(Lallubhai Chakkubhai v. Shamaldas Sankalchand Shah, AIR 1934 Bom 407).

(h) A method of agriculture or horticulture is not an invention.

Examples of subject matters excluded from patentability under this provision are:

(a) 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).

(b) A method of producing improved soil from the soil with nematodes by treating the soil with a preparation containing specified phosphorathioates.

(d) A method for cultivation of algae.

(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.

This provision excludes from patentability, the following:

(a) Medicinal methods: As for example a process of administering medicines orally, or through injectables, or topically or through a dermal patch.

(b) Surgical methods: As for example a stitch-free incision for cataract removal.

(d) Prophylactic methods: As for example a method of vaccination.

(e) Diagnostic methods: Diagnosis is the identification ofthe nature of a medical illness, usually by investigating its history and symptoms and by applying tests. Determination of the general physical state of an individual (e.g. a fitness test) is considered to be diagnostic.

(f) Therapeutic methods: The term therapy‘‘ includes prevention as well as treatment or cure of disease. Therefore, the process relating to therapy may be considered as a method of treatment and as such not patentable.

(g) Any method of treatment of animal to render them free of disease or to increase their economic value or that of their products. As for example, a method of treating sheep for increasing wool yield or a method of artificially inducing the body mass of poultry.

(h) Further examples of subject matters excluded under this provision are: any operation on the body, which requires the skill and knowledge of a surgeon and includes treatments such as cosmetic treatment, the termination of pregnancy, castration, sterilization, artificial insemination, embryo transplants, treatments for experimental and research purposes and the removal of organs, skin or bone marrow from a living donor, any therapy or diagnosis practiced on the human or animal body and further includes methods of abortion, induction of labour, control of estrus or menstrual regulation.

(i) Application of substances to the body for purely cosmetic purposes is not therapy.

(j) Patent may however be obtained for surgical, therapeutic or diagnostic instrument or apparatus. Also the manufacture of prostheses or artificial limbs and taking measurements thereof on the human body are patentable.

(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.

The subject matters excluded under this provision are:

(a) plants in whole or in part

(b) animals in whole or in part

(d) varieties and species of plants and animals

(e) essentially biological process(es) for production or propagation of plants and animals.

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.

A new process of preparation of a vaccine under specific scientific conditions, the vaccine useful for protecting poultry against contagious bursitis infection was held to be patentable by the Court on the ratio that the statute does not make a manner of manufacture as un-patentable even if the end products contains a living organism. (Dimminaco – A.G. Vs. Controller of Patents & Designs and Others).

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.

a. Under this provision, mathematical methods, business methods, computer programmes per se and algorithms are not considered as patentable subject matter.

b. Mathematical methods‘are considered to be acts ofmental skill. A method of calculation, formulation of equations, finding square roots, cube roots and all other methods directly involving mathematical methods are therefore not patentable. With the development in computer technology, mathematical methods are used for writing algorithms and computer programs for different applications and the claimed invention is sometimes camouflaged as one relating to the technological development rather than the mathematical method itself. These methods, claimed in any form, are considered to be not patentable.

c. Business Methods claimed in any form are not patentable subject matter. The term Business Methods‘ involves whole gamut of activities in a commercial or industrial enterprise relating to transaction of goods or services. With the development of technology, business activities have grown tremendously through e-commerce and related B2B and B2C business transactions. The claims are at times drafted not directly as business methods but apparently with some technical features such as internet, networks, satellites, telecommunications etc. This exclusion applies to all business methods and, therefore, if in substance the claims relate to business methods, even with the help of technology, they are not considered to be a patentable subject matter.

d. 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.

e. Patent applications, with computer programme as a subject matter, are first examined with respect to (b), (c) and (d) above. If the subject matter of an application does not fall under these categories, then, the subject matter is examined with a view to decide whether it is a computer programme per se.

f. If the claimed subject matter in a patent application is only a computer programme, it is considered as a computer programme per se and hence not patentable.

Claims directed at computer programme products‘ are computer programmes per se stored in a computer readable medium and as such are not allowable. Even if the claims, inter alia, contain a subject matter which is not a computer programme, it is examined whether such subject matter is sufficiently disclosed in the specification and forms an essential part of the invention.

g. If the subject matter of a patent application is not found excluded under the foregoing provisions, it shall be examined with respect to other criteria of patentability.

(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, books, pamphlets, lectures, addresses, sermons, dramatic-musical

works, choreographic works, cinematographic works, drawings, architecture, engravings, lithography, photographic works, applied art, illustrations, maps, plans, sketches, three dimensional works relating to geography, topography, translations, adaptations, arrangements of music, multimedia productions, etc. are not patentable. 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. For example,

(a) Method of playing chess.

(b) Method of teaching.

(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. In the matter of application No. 94/Cal/2002, the Controller held that the Patent system was meant for protecting only one kind of creativity i.e. technological creativity and since the claimed invention relates to business method and method of presenting information, it is not allowed.

(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.

LML Ltd V. BAJAJ Auto Ltd. [IPAB] TRA/3/2007/PT/DEL Prabha Sridevan, Chairman & D P S Parmar, Technical Member [Decided on 02/05/2013]

Brief facts:

This is a transfer application for revocation of Patent No.189097 granted to Bajaj Auto Limited. This application has been transferred to Intellectual Property Appellate Board (IPAB) by Hon’ble High Court of Delhi vide order No. C.O.No.3 of 2004 dated 25th May, 2007. The applicant in this case, LML Limited is an Indian company incorporated under the Companies Act, 1956 carrying out their business for several years, inter alia, in the field of motor vehicles including two – wheeled motor vehicles such as motorcycles, motorscooters, mopeds and the like. They received a cease and desist notice from respondent on 12th April 2004. The applicant filled a petition for revocation of patent no 189097 at Hon’ble High Court Delhi (CO.NO.3 of 2004) on 27.04.2004. They are therefore ‘person interested’ to file this revocation application.

Decision: Application dismissed.

Reason:

We have considered the submissions of the learned counsel for appellant. In the facts of the instant case, it is not disputed that split type shackles have been in use since long prior to the application for the impugned patent. The claimed ‘Patent’ also used a similar type of mechanism both at the lower end of the rod by which theceiling fan is hanged and also at the top of the shaft of the fan. The mechanisms have been put in a single piece on both the ends being the lower end of the rod and the upper end of the shaft of the fan.

In order to be patentable an improvement on something known before or combination of different matters already known, should be more than mere workshop improvement. In any opinion, it cannot be said in the instant case, that the patent registered is an inventive step, or that the same is more than a workshop improvement. Furthermore, it is a mere collection of more than one integers or things, not involving the exercise of any inventive faculty as such, the same does not qualify for the grant of patent. It is a device and/or mechanism which had already been in use at the top end of the rod. Merely because the same device and/or mechanism has been made use of the lower end of the rod to couple it with the upper end of the shaft of the fan by using the same mechanism and or device and merely because the two devices have been joined into a single piece on both sides, it cannot be said that it amounts to a new invention. In my opinion, it is an application of a known mechanism which had already been used for all practical purposes. It was obvious to a skilled worker in the field concerned, in the state of knowledge existing at and prior to the date of the patent and was to be found in the literature and/or knowledge then available to him.

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.

The fundamental principle of Patent Law is that a patent is granted only for an invention which must be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of a patent that it must be the inventor’s own discovery as opposed to mere verification of what was, already known before the date of the patent.

It is important to bear in mind that 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.

We do not find the claimed invention is anticipated by the above referred citations as no clear case is made out by the applicant. This ground therefore fails.

Obviousness

The counsel for applicant submitted that the impugned patent is nothing but a workshop improvement and minor rearrangement of technology that is in the public domain.

The Counsel for the applicant submitted that use of reed valve in the conventional two stroke engine is admitted by the respondent as known (Page 4 para 3 of specification) where carburetor is not directly fixed to the crankcase but it is positioned between crankcase and inlet manifold. Therefore what emerges from this is that claimed invention is only for an arrangement. According to the counsel claimed invention constitutes nothing more than workshop modification and minor tinkering with well known technology.

The learned counsel submitted that to meet the original challenge of maintaining the monocoque chassis of the scooter and retaining the intake system, chassis shape and engine transmission positioning as it is, patentee decided to place reed valve in a minimum space between the crank case and carburettor housing in the intake system. In order to ascertain obviousness we will now examine the documents relied on by the applicant. We find that UK patent 857575 of Piaggio (1960) which is cited as the closest prior art where carburetor system is directly mounted on the engine intake port 7 engine crank case. This patent does not teach the use of valve between the carburettor conduit 11 and engine intake port 7. Another US Patent 4475487 cited by applicant is related to ‘Joint pipe for the carburetor’ for a chain saw or portable machine. Here it shows use of two cylinders (1, 3) with a common crank case 3. The carburetor 4 is placed offset to the intake port 8. The carburetor is connected to reed valve through joint pipe 5. This inventive carburetor joint pipe ensures improved mixing of air fuel mixture. This patent does not teach use of any carburetor housing accommodating carburetor, air filter etc. In this case the carburetor is not directly mounted on crank case but is offset rearwardly from intake port 8. It does not disclose that reed valve is adopted to be positioned between crank case and carburetor housing. In fact the reed valve in this patent is placed between crankcase and joint pipe.

US patent 4964381 is for fuel injection features of a two cycle engine for motorcycles. This intake system is different from impugned patent as it does not disclose that reed valve is positioned between crankcase and carburetor housing. The monocoque chassis and engine & transmission located at one side is also not disclosed. We do not agree with the applicant that the claimed invention is mere workshop modification and arrangement. We agree with the respondent that one cannot adopt known (or off the shelf) design/shape of reed valve and its mounting arrangement to any or all types of intake system.

Thus we find that impugned patent is an inventive improvement over UK 857575 which made the invention in question more useful and efficient. The above analysis of all the documents relied on by the applicant clearly demonstrates that claimed invention is not obvious. This ground therefore also fails.

Insufficiency

The counsel for the respondent submitted that no evidence has been adduced by the applicant to prove that the complete specification does not sufficiently and fairly describe the invention and the method by which it is performed. According to the counsel the test results given at page 6 of the specification compared vehicle fitted with the intake system of prior art with the intake system of invention is extra information which is not essential to design and manufacture the claimed invention. The counsel submitted that respondent and disclosed the invention in compliance with section 10.

We also find the specification has disclosed the invention sufficiently and fairly. In absence of any evidence of the applicant to the contrary we are inclined to disagree with the argument of the applicant in respect of insufficiency. This ground therefore also fails.

Mere arrangement and rearrangement

The learned counsel for the applicant submitted that the alleged invention comprises merely in providing a reed valve between the carburetor housing and the crankcase in two stroke internal combustion engine. The reed valve functions in a conventional as a one way valve as admitted by the respondents.

The carburetor and the crankcase carry out their respective well known and conventional functions. According to the learned counsel for the respondent, they have done in connecting the well known and conventional carburetor directly to the well known and conventional reed valve. These three components continue to carry out their respective functions. Therefore, this constitute a mere arrangement or rearrangement or duplication of known devices each of which carry on their own functions in an independent manner, which according to the learned counsel is not patentable under section 3(f) of the Patents Act, 1970.

The counsel for the respondent admitted that all the parts per se are known but the combination function is different. According to the counsel this novel combination of components parts of improved intake system for two stroke engine used particularly in two wheelers having monocoque chassis and where engine and transmission are disposed substantially to one side of the vehicle cannot be termed as mere arrangement or combination. We find the argument of the respondent convincing as the conventional functions of the individual parts would not suggest the increase in the efficiency and reduction of emission. The impugned claim relates to combination of several parts and not any individual part to part. The positive limitation in the claims makes the invention specifically applicable to the type of two wheelers having monocoque chassis and where engine and transmission are disposed substantially to one side of the vehicle. Accordingly this cannot be described as mere arrangement and rearrangement.

Therefore this ground also fails. In view of above analysis and findings we are convinced that applicant has not made out a case for revocation of this patent.

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