Patentability in India:

What can (and cannot) be patented?

India’s Patent system provides for the criteria to protect real inventions while also ensures that there are certain exclusions in the patentability to keep balance between encouraging innovations and safeguarding public interest.

Patentability Criteria in India

Patents in India are governed by the Patents Act, 1970. Basically, legal protection is granted to an invention when it qualifies the given three criteria:

• Novelty: The invention must be new and not previously disclosed to the world, even through publications, websites or prior patent applications.

• Inventive step: An invention must not be obvious to someone skilled in the field or having experience in the particular field. An invention will not be considered patentable if, in view of prior art, it is evident to a person skilled in the relevant technical field. The inventive step is one of the key tests to prevent granting patents for trivial or obvious modifications of existing inventions.

• Industrial Applicability: The invention should be industrially applicable. The invention should be capable of being used in any industry be it manufacturing, agriculture, healthcare, or in any other commercial unit. It should have practical utility, solving a technical problem and usable in industry.

Patentable Subject Matter

An invention to be patentable has to fulfil the following criteria:

• The subject matter of the invention must fit into the category of process, machine, manufacture, or composition of matter.

• That subject matter cannot fit into an exception acknowledged by the courts. This includes laws of nature, physical phenomena, and abstract ideas.

• Machines and Devices: Any new electronic or mechanical technology.

• Chemical Compounds: Any chemical composition of pharmaceuticals or chemicals that are novel applications.

• Manufacturing processes: Any procedures used to create or carry out a task more effectively or with concern for the environment.

Examples:

• Business methods and processes

• Computer hardware

• Machines

• Sports equipment

• Electronics

• Pharmaceuticals

• Fabrics and fabric designs

• Computer software that produces a “useful, concrete, and tangible” result.

Non-Patentable Subject Matter

Sections 3 and 4 of the Patents Act, 1970 provides for the innovations that are not patentable in India, as highlighted below:

Section 3 of Patent Act, 1970:

• Inventions being frivolous or contrary to public order, morality, public health, the environment, etc.;

• Scientific discoveries

• Mere discoveries of new forms of known substances

• Methods of agriculture or horticulture

• Diagnostic, therapeutic and surgical methods for the treatment of humans or animals

• Plants and animals other than micro-organisms

• Mathematical or business methods or computer programs per se or algorithms

• Literary, dramatic, musical or artistic work or any other aesthetic creation

• Schemes, rules or methods of performing mental acts or methods of playing games

• Presentations of information

• Topography of integrated circuits

• Traditional knowledge

Section 4 of Patent Act, 1970:

• No patent to be granted for an invention relating to atomic energy.

Case Laws related to Patentable and Non-Patentable Inventions

• Novartis v. Union of India (2013): Novartis applied for a patent on the beta crystalline form of the anti-cancer medication imatinib mesylate (Gleevec). Under Section 3(d), the Indian Patent Office denied the application, claiming it was a novel formulation of a well-known drug with no improved efficacy. Novartis contested this, arguing that Section 3(d) was in violation of TRIPS. Judgment: The Supreme Court ruled that Section 3(d) of the Patents Act of 1970 was both necessary to stop evergreening and compliant with TRIPS. Novartis's patent application was denied by the court, which prioritised public access to reasonably priced medications. This is because incremental innovations can only be patented if they show improved efficacy.

• Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979): In order to improve manufacturing safety and efficiency, the respondent, Hindustan Metal Industries, possessed a 1951 patent for an improved technique and apparatus for holding and rotating metallic utensils (such as plates and dishes) on a lathe. Hindustan Metal Industries filed a lawsuit for damages and a permanent injunction against Bishwanath Prasad Radhey Shyam, employed a similar tactic. Mr. Radhey Shyam responded by claiming the patent lacked originality and an inventive step in a counterclaim (and separate petition) filed under Section 26 of the Indian Patents and Designs Act, 1911. Given the prior public use and the merely incremental improvement, the Supreme Court deemed the patent invalid. The decision reinforced the principle that patentability requires: (a) A novel process or device; (b) A non-obvious inventive step and (c) More than a mere marginal or standard workshop modification.

India's patent system strikes a morally sound balance between promoting technological advancement, avoiding monopoly abuse, and protecting public access. To be eligible for patent protection, innovators must make sure that their creations address a technical issue, provide a real benefit, and surpass the threshold of inventiveness.

This article has been authored by Akriti Thakur, Intern at Intellect Goodwill LLP, as part of our ongoing IP Awareness Series - Intellect Insights, aimed at simplifying complex intellectual property concepts for entrepreneurs, creators, and businesses.

The views expressed in this article are for informational purposes only and do not constitute legal advice. The content reflects the personal analysis of the author and not necessarily the views of Intellect Goodwill LLP.