Law of Patent: A visit to the domain of

invention-
An Indian Perspective

-Diganta Biswas
Teacher in Charge,
Balurghat Law College.

No human condition is ever permanent. Then you will

not be over enjoyed in good fortune or too scornful in
misfortune.
.......Socrates

Introduction:-
The system of Patent or Letters patent has its origin in The English Law; & literally the
word Patent owes its origin in the Latin “Patere” meaning ‘to open’. It initially used to
signify a record of the grant made by the crown which is pen for the entire world. Now, a
Patent is a form of industrial property. It is granted only to new inventions capable of
industrial applications. It is a monopoly right granted to a person who has invented a new
and useful article or an improvement of an existing article or a new process of making an
article. The owner of it can sell the whole or part of this property. He can also grant
licenses to others to use it. It gives temporary protection to technological inventions and
design rights to the appearance of mass- produced goods. After the expiry of the duration
of patent, any body can make use of the invention.
Evolution of the System of Patent with special emphasis to India: -
The birth of the patent system took place in England. In England in the early days, the
Crown possessed as a royal prerogative of the sole right to grant monopolies. In 1610, a
declaration was made by James - I, in a book published by the king himself, notifying
that monopolies in general were bad. However an exception was made in respect of
“projects of new inventions so they are not contrary to the law or mischievous to the
state by raising prices commodities at home or hurt or otherwise inconvenient’.
Subsequently in 1624 the Statute of Monopolies (21 Joc 1. ch.3) was passed by the
Parliament. The modern structure of patent law in England, which has served as a model
for the Patent Laws of many countries of the World, is founded on Section 6 of the
Statute of Monopolies with the desire of imposing some qualification upon the system in
the name of higher public interests. However for the first time in 1852 the British Law of
Patent came in. Unlike Great Britain, where the concept of a patent originated from the
exercise of the royal prerogative to grant monopolies, in India, a patent for invention has
always been the sole creation of statutes of Indian legislature. The first Act relating to
patent rights was passed in 1856 (Act VI of 1856) which granted certain exclusive
privileges to the inventors of new manufactures for a period of 14 years. This Act was
found defective and was therefore re-enacted with modifications under Act No. XV of
1859. The provisions of this Act were founded on the English Patent Act of 1852. Under
the Act of 1859 patent monopolies were called “exclusive privileges” of making, selling
and using the invention in India and authorising others to do so for the term of 14 years
from the time of filing such specification. In 1872 the Patent and Designs Protection Act
was passed, followed by the Protection of Inventions Act, 1883. These Acts were
consolidated by the Inventions & Designs Act, 1888. Subsequently the Indian Patents and
Designs Act, 1911 (Act II of 1911) was passed replacing the entire previous Act. This
Act established for the first time in India a system of Patent Administration under the
management of the Controller of Patents.
In the year 1948 a Committee headed by Dr. Bakshi Tek Chand, a retired
Judge of the High Court of Lahore, was appointed by the Government of India to review
the Patent Law in India with a view to ensure that the Patent system was more conducive
to national interest. On the basis of the interim report submitted by this committee,
certain amendments were made to the Act of 1911. (Amended section 22,23 and 23A to
23G) by the Act 32 of 1950. The Committee submitted its final report in April 1950,
subsequently after the lapse of the report in the form of Bill, in 1957. The Govt. of India
requested Shri Justice N. Rajagopala Ayyanger assisted by Dr. S. Venkateshwaran to
advice the Govt. on the question of the revision of the Patent Law. Shri Ayyanger
submitted his report in 1959 with various recommendations for effecting radical changes
in law. On the basis of this report a Patent Bill was introduced in the Lok Sabha in 1965,
which, however, lapsed. Again an Amendment Bill was introduced in 1967 which
culminated in the Patents Act, 1970 embodying the present law of patents in India. The
Draft Patent Rules were published in November 1971. The Act and the final rules (with
the exception of a few provisions) come into force on 20th April.1

With the establishment of WTO, TRIPs Agreement have come force w.e.f. 1st
January, 1995 and India being a member was under obligation to implement provisions of
TRIPs agreement. Pursuant to this agreement, the Govt. of India Promulgated an
Ordinance dated 31st December, 1994 to amend the Patent Act, 1970 and later on a Bill
relating thereto was passed in 1995 in Lok Sabha, and was referred to Select Committee.
However in the year, 1999 in Parliament and the president of India gave his assent on
26th March, 1999. As per this amendment the provisions of Sec. 5 has been amended by
adding sub section (2) for the grant of patent for Pharmaceutical products which facilitate
the applicants to file their applications for the grant of Exclusive marketing rights (EMR)
upto 31st December, 2004. While a patent confered exclusive right in respect of making
selling, using, distributing, and exercising offering for sale for full term of patents where
as an EMR was a limited right for five years and restricted only to sell and distribute the
product. Such applications had been named as “Mail box” applications. Under the Patents
(2nd Amendment) Bill 1999 it has proposed substantial changes in the law which was

1
P. Narayanan, Intellectual Property Rights, 3rd. Ed, 2004 Eastern Law House. Calcutta. pg. 4&5
introduced in the Parliament in December 1999 and was passed as a Patents
(Amendment) Act 2002. The Patent Act, 1970 has been amended for third time by
passing an ordinance in the year “2004”. The Bill passed in the Parliament on 26th
December 2004. The followings contain in the amendment2 To give effect to the present
Ordinance into Act the Bill containing the amendment has been passed in the Lok Sabha
rd
23 March 2005.3 The Law of Patent has been influenced by a number of International
agreements. Thus for the purpose of better understanding let’s have a glance of the major
ones.
International Agreements in patent Protection:-
1. Paris Convention:-
The Paris Convention is the foundation for international patent protection in the late
nineteenth century. The original Paris treaty from 1883 has been revised several times
and today it stands in the form of its 1967 Stockholm Revision. The Convention of 1883
established the principles of national treatment (Art.2); right of priority (Art.4); and the
guarantee of a certain minimum protection. This Convention also provides for the
application of the national treatment rule to nationals of non-member countries, if they
are domiciled or have an industrial or commercial establishment in a member country.
Again, the convention specifically recognised that no valid patent could be granted if
before the application is filed, the invention has been described in a printed publication,
either in the country of application or any other country. This Convention provided
framework for the Patent Co-Operation Treaty, European Patent Convention and the
Community Patent Convention.

2. Patent Co-Operation Treaty (PCT):- The PCT is an agreement for international co-
operation to simplify and to make economical the filling of application for a series of
countries. To achieve this objective, the PCT enabled the filing with the receiving office
a single application called the international application.

3. European Patent Convention (EPC):- Another significant mile stone in

internationalising the Patent system is the European Patent Convention which was signed
in 5th October, 1973 at Munich with the object to strengthen co-operation between the
states of Europe in respect of protection of inventions. Earlier, in 1963 Strasbourg
Convention the European States adopted some uniform points of Substantive Law on
Patents for inventions. The most important aspect of this Convention was the
establishment of a single patent granting authority i.e. the European Patent Office (EPO)
which allowed an applicant to file a single patent application at EPO that may mature into
a number of individual national patents for different member states designated in the
application. The Convention inter alia provided under Arts.63and 53 that the Euro patents
will provide for protection for a period of 20 years and are granted for inventions which
were new, involve an inventive step and are susceptible to industrial application.

2
By Special Correspondent, Ordinance expands product patent facility, The Hindu, Delhi 28th
December, 2004, Pg. 3.
3
See The Hindu 24th March, 2005, Pg.1.
4. The UPOV Conventions and the impacts thereof: - The UPOV gave strength and
vigour to the global seeds men or breeders to exploit the genetic resources not only from
their countries but also from all available sources in the world. The UPOV agreement
signed in the year 1961 gave strength and vigour to the global seeds men initially under
the leadership of Germany, Hungary, Italy Netherlands, Austria, UK etc. who had already
introduced the system of private monopolization of plants and seeds business through
legislation not only from their own countries but also from the other countries as well.
This convention interalia mandates the member countries to provide protection of seeds
for commercial marketing.4 This led to the shifting of seed companies from the
production of seeds of fruit plants and ornamentals to that of agricultural seeds.5
With the Gene Revolution and with the development of high yielding
varieties the farmers are losing their traditional varieties which is at the same time
endangering the genetic base of the world along with pushing the farmers into the hands
of big seed companies for their survival.6 Again the UPOV Convention had been
constantly revising to tighten the IPR protection over biodiversity. One of the notable
incident to this dimension is the amendment took place in1991which omitted the
exemption clause in the original convention on Farmers’ Rights to reuse the seeds.7 As
such, the activities of the MNCs and the bodies engaged in the process of collecting and
developing the genetic variations worldwide are encroaching into the areas of the
enjoyment of some of the traditional rights enjoyed by some communities. As far as the
record is concerned the developing nations possess the genetic basket of the world and
hence this system affecting gravely to the third world countries.

5. The Biodiversity Convention: - The Convention on Biodiversity (CBD) in 1992 has

somehow advanced the IPR regime in biodiversity protection. This Convention under
Art.8 (j) imposes an obligation on the contracting parties to respect, preserve and
maintain the knowledge, innovations, and practices of indigenous and local communities
embodying traditional lifestyles for the purpose of conservation and the sustainable use of
biodiversity. It again mandates prior permission of the holders of the traditional
knowledge system for the wider application and also entails showing of benefits. This
provision may be read as the recognition of the patent like IPR protection over the
existing knowledge systems and warrant for their protection.

6.TRIPs Agreement:- The 8th Round of GATT negotiations began Punta Del Este in
Uruguay in Sept. 1986 had brought a structural change in world trade. It contained the
mandate to have negotiation in 15 areas. In Part I, we see among the negotiations
conducted in 14 areas on Trade in Goods which included new areas such as TRIPs,
TRIMs and Trade Related services were included for the first time for negotiation. It
includes inter alia-

4
Art. 14 of the 1961 Convention.
5
See Mooney Pat Roy; The Law of the Seeds: Another Development & Plant Genetic Resources
Development Dialogue, 1993 pp 95-99; see also Rai Mangala, “Intellectual Property Rights in agriculture.
Nov. 16-18, 1992 IARI, New Delhi.
6
Lawrence Surendra and N.S. Gopal Krishnan; Intellectual Property, Seeds, The Future of Farmers and
Farming (1995) 5 SCC(j) at pg.12
7
Art. 14, Art.14.5(c) and Art.15.2 of the Amended UPOV Convention.
 i. Article 27 of the Text provides that Patents shall be available for any
inventions, whether produce or processes, in all fields of technology, provided that
they are new in solve and inventive step and are capable of industrial application.
ii. It implied that the entire industrial and agricultural sectors and to an extent bio-
technology sector would be covered under the Patent protection.
iii Under Art. 27(3) (b) the WTO member countries had been made empowered to
exclude from patentability “Plants and Animals other than micro-organisms and
essentially biological processes for the production of plants or animals other than
non-biological processes” so long as members provide for the protection of life
forms, “either by patents or by any effective sui generis system or by any
combination thereof.”

iv. Under the TRIPs agreement a patentee has been given the exclusive rights in
respect of a patent in the areas as-
a. In case of product patent a patentee can present third parties from
making using, selling or importing patented product without his consent.
b. Where patent is a process patent. The patentee can prevent third parties from
using the process by using selling or importing product obtained by that process
without his consent.
v. The TRIPs agreement provides that the patent shall be available and patent right
enjoyable without discrimination as to the place of invention.
vi. The agreement requires 20 years patent protection.
However it excluded under Article 27(3) the followings-
(a) Diagnostic, therapeutic and surgical methods for the treatment of humans or
animals. &
(b) Plants and animals other than micro-organisations and essentially biological
processes for the production of plants or animals other than non-parties shall
provide for the protection of plant varieties either by patents or by an effective sui
generis system.
(c) Inventions may be excluded from patentability if their commercial exploitation
is prohibited for reasons for public order of morality.
However, for the first time in 1930, the USA introduced the Plant Patent Act and
rendered the protection of new plant varieties those were asexually reproduced and non-
tuber propagated. This law was primarily used for the protection of ornamental and fruit
plant varieties which were mainly produced by asexual methods such as budding,
grafting, layering and so on. But this position has been changed in the eighties. The first
patent for a plant was given in the United States in 1985 and for an animal in 1988.
Thereafter again the USA has amended this law in the year 1998 to extend plant patent
coverage to plant parts in addition to plant itself8.

8
Suman Gupta, Intellectual Property Protection for plant innovation: A journey from UPOV to TRIPs:
Delhi Law Review. 2003, Vol.XXV pg. 122-134 at 125.
Invention as an essence of Patent: -
A patent can be obtained only for an invention which is new and useful. Article
27.1 of TRIPs has incorporated three universally recognised criteria of patentability,
namely novelty, non-obviousness and industrial application of utility which even includes
all inventions including biotechnological inventions. Again, a patent may also be
obtained for an improvement of an article or of a process of manufacture. The applicant
for a patent must be true and first inventor or a person who has desired title from him; the
right to apply for a patent being assignable. He must give a full and sufficient disclosure
of the invention and specify the precise limits of the monopoly claimed. The invention
claimed must be novel and must not be obvious to those who are skilled in the art to
which it relates.
A. Novelty:- Novelty means newness. Generally the term invention means the finding
out of something which has been found out by other people. Of the three universally
acknowledged requirements the element of novelty is of core value. More clearly,
invention is to find out something or discover something not found out or discovered by
any one before. Thus, so long something is novel or new, it would be an invention. The
issue of novelty has been greatly emphasised by the Patent Act of all countries. However
the basic test for anticipation or want of novelty is the same as that for the infringement
and generally one can properly ask oneself whether the alleged anticipation would, if the
patent were valid, constitute an infringement. This test is popularly known as “reverse
infringement test” which has been developed by the Australian Court in Meyers Taylor
Pty. Ltd v. Vicarr Industries Ltd.9 The test is as under-
a. if a citation discloses all the features of acclaim, the claim will lack novelty;
however
b. if the citation doesn’t disclose all the features of a claim, the claim will still
lack novelty provided the citation discloses all the essential features of the claim;
but
c. if an essential feature is not disclosed in the citation, the claim is novel.
Thus, similarity negates novelty and thus constitutes anticipation. Anticipation is a
two step analysis. The first step involves construction of the claims of the patent at issue.
In the second step, the claims are compared to prior art. A claim will be anticipated, and
therefore invalid if every limitation is described in one prior art reference and the prior art
is enabled such that one of the ordinary skill in the art could practice the invention.10
B.Non- Obviousness:- Etymologically the word obvious means manifest or evident. The
Patent law regards the development or disclosure of inventions those are new; useful; and
non-obvious advances. After justice Bradley in Atlantic Works v. Brady11 it was never
the object of those laws to grant a monopoly for every trifling device, every shadow of a
shade of an idea, which would naturally and spontaneously occur to any skilled mechanic
or operator in the ordinary progress of manufacture. Thus, if the new use involves no
9
(1977) 137 CLR 228, 235.
10
Elizabeth Verkey: Law of Patents; Eastern Book Company; 1st ed. 2005 at pg. 28.
11
107 US 192 (1882)
ingenuity but is in manner and purpose analogous to the old use, although not quite the
same there is no invention. On the other hand, a patent for a new use of a known
contrivance is good and can be supported if the new use involves practical difficulties
which the patentee has been the first to see and overcome by some ingenuity of his own.12
Under Section 64(f) the Indian Patent Act 1970 a patent can be revoked if the invention is
obvious. The US Supreme Court in Graham v. John Deere13 has set out a tripartite test
for obviousness. It includes –
a. the scope and content of prior art;
b. the differences between the prior art and the claimed invention;
c. the level of ordinary skill in the pertinent art.
Again, in Bayer’s Application 14 evolved the Problem Solution Approach which
includes- a. the determination of the closest prior art;
b. the establishment of the technical problem to be solved; and
c. the determination of whether or not the claimed invention starting from the
closest prior art and the technical problem would have been obvious to the
skilled person.
Thus, obviousness has to be assessed not by what is known and what
was known at the priority date and asking whether the former flows naturally and
obviously from the latter, but by hypothesising what would have been obvious at the
priority date to a person skilled in the art to which the patent- in- suit relates. Again,
consideration of the magnitude of the problem and whether there have been many
attempts to find a solution in the past, all of which have proved to be unsuccessful will
provide a useful rule of thumb.
C. Industrial application:- To get a patent over an invention, the invention must be
having the element of industrial application. If an invention doesn’t have the industrial
application or it doesn’t breed commercial success patent over that invention is not
possible because commercial success of an invention tends to show non-obviousness of
that invention satisfying the long felt need, failure of others to find a solution to the
problem at the hand, and copying of the invention by others.15 Again this success cannot
be due to superior marketing or similar considerations. In Pfizer Ltd.’s Patent case16
Laddie, J. commented “Commercial success comes into its own as a secondary
indication of inventiveness where both the relevant prior art has been available and the
need for a solution to a known problem has been sought for a long time. Failure to make
the step which is covered by the patent in those circumstances may be some indication
that it is not as obvious as it might first appear.”
Difference between invention and discovery: -

12
Gadd & Mason V. Mayor, etc. of Manchester, (1892) 9 RPC 516, 524
13
383 US 1 (1966)
14
(1982) OJEPO 205.
15
Panduit Corpn. v. Dennison Mfg. Co. ; 810 F. 2d 1561 (Fed. Cir. 1987)
16
2001 FSR 201
Refer Biotech Directive of Europe, 1998.
Refer pg. 16- ; 32- of the Plant Varieties Protection by Elizabeth Varkey.
Constitution vis a vis Patent:- The Indian Constitution amongst the very less
Constitutions of the world having the specific entry for the purpose of legislation. We
under Article 246; Seventh Schedule; List I; Entry 49 have incorporated the said
provision. It includes Patents, inventions and designs; copyright; trade-marks and
merchandise marks. Today Patent system has been internationalised and moreover, it is to
a great extent it has the role to play in the Economy of a nation. Under the new system as
we have become the member of WTO, it is influencing the patent structure of the
member countries. Thus, if we don’t go by the guidelines of the WTO, nobody but we
will be the looser. We in our Constitution have included the provision under which we
are in a position to go by the International agreement, treaty etc. Under Article 253 the
Parliament has been conferred with the power to make any law for implementing any
treaty, agreement or convention with any other country or countries or even any decision
made at any international conference, association or other body. Being empowered with
this provision we have developed the patent structure of the country.
*The Indian System of Patent:-
The Indian Patent Act 1970 is often been considered as model legislation for developing
countries. Originally the Patent Act used to grant only process patent in the areas of
chemicals, pharmaceuticals and food. But as India became a member of the WTO India
needed to amend the law.
The patent law of 1970 defines the term invention under Section 2(1)(j). It includes,
invention means, any new and useful -
i. art, process; method or manner or manufacture;
ii. machine, apparatus or other article
iii. substance produced by manufacture, and includes any new and useful
improvement of any of them, and an alleged invention.
Again, the following inventions had been left outside the ambit of the
patentable invention under sections 3-5 of the Act-
i. an invention which is frivolous or which claims anything obvious or contrary to the
well established natural laws
ii. an invention the primary or intended use of which would be contrary to law or
morality or injurious to public health
iii. the mere discovery of a scientific principle or the formulation of an abstract theory
(e.g. the theory of relativity is not patentable)
iv. the mere discovery of any new property or new use for a known substance or of the
mere use of known process, machine or apparatus unless such known process
results in a new product or employs at least one new reactant;
v. a substance obtained a mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance;
vi. the mere arrangement or rearrangement or duplication of a known devices each
functioning independently of one another in a known way;
vii. a method or process of testing applicable during the process of manufacture for
rendering the machine; apparatus or other equipment more efficient or for the
improvement or restoration of the existing machine, apparatus or other equipment
or for the improvement or control of manufacture;
viii. a method of agriculture or horticulture
ix. a process for medical; surgical, curative, prophylactic or other treatment of human
beings or any process for a similar treatment of animals or plants to render them
free of disease or to increase their economic value or that of their products;
x. an invention relating to atomic energy;
xi. in respect of food, medicine, or drug, patents are granted only for the process of
manufacture of the substance but not for the substance itself.
xii. In respect of substances produced by chemical processes (including alloys, optical
glass, semi conductors and intermetallic compounds) patents are granted only for
the process of manufacture but not for the substance itself.
But under the Patents (Amendment) Act 1999 applications for product patents
for inventions relating to medicine and drug were permitted with a condition that those
applications were not made a subject for examination for anticipation till the end of
December 2004 while the applicants had been given the Exclusive Marketing Rights.
Further, this EMR was not given to the articles falling under category of Indian
Medicines as defined under Section 2(1) of the Indian Medicine Central Council Act
1970 and where such articles were already in Public Domain.
The term “invention” has again been redefined under the Amendment Act of
2002 to mean a new product or process involving an inventive step and capable of
industrial application. Again under the new amendment Act the followings inter alia have
been declared as not patentable, viz.
(a) An invention contrary to law or morality or which causes serious prejudice to
human, animal or plant life or health or to the environment.
(b) Discovery of any living thing or non-living substance occurring in nature.
(c) Plants and animals other than micro organisms in whole or any party thereof
including seeds, varieties and species and essentially biological process for
production or propagation of plants and animals.
(d) Computer program or algorithms.
(e) A literary, dramatic, musical or artistic work or any other artistic creation,
whatsoever including cinematographic works and television production.
(f) Presentation of information
(g) Topography of integrated circuits.
 However, the Patent amendment Act 2005 it has extended Patent Protection to
products in all fields of technology; including drugs, food, chemicals, which were earlier
excluded. 17 This amendment has brought significant changes in the domain of invention.
Now, a new invention means any new technology which has not been anticipated by
publication in any document or used in the country or else where in the world before the
date of filing of the patent application with complete specification, which means the
subject matter has not fallen in public domain or that it doesn’t form part of the state of
the art. Under the amended provisions inventive step means18-
i. a feature that involves technical advance as compared to the existing
knowledge or
ii. having economic significance or both
iii. and non-obvious to a person skilled in the art.
Sum up
Patent is a monopoly right granted to the inventor or a developer of a particular idea for a
defined period which the persons of similar skill and knowledge could not have
developed. For this they exclusively possess the right to exploit the invention backed by
the Government. He may grant another to use the idea; he may lease or even sell the
same. At the instance of the TRIPs agreement and other relevant agreements the area of
patentability has been extended. Now the patent can be granted also in the areas of
biotechnological inventions, food and agro based innovations. However, these
developments must include the elements of novelty and non-obviousness and also having
the element of industrial utility.

17
See The Hindu 24th March, 2005, Pg.1.
18
Sec. 2(ja) Patent (Amendment )Act 2005, Sec.2 Patent Act 1970.