Criteria for Patentability in U.K. U.S.

& India

Submitted to Ms. Kuhu Tiwari

(Faculty of IPR-Patent Law)

Submitted by Anant ekka

Section A
Roll No: 26
Semester VIII
B.A.LL.B(Hons.)
Submitted on: 06 /04/2017

HIDAYATULLAH NATIONAL LAW UNIVERSITY, RAIPUR (C.G.)

1
 Acknowledgement
The successful completion of any task would be, but incomplete, without the mention of
people who made it possible and whose constant guidance and encouragement crowned my
effort with success.

I would like to thank my course teacher Ms. Kuhu Tiwari for providing me the topic of my
interest.

Secondly, I would like to thank our Vice Chancellor for providing the best possible facilities
of I.T and library in the university.

I would also like to extend my warm and sincere thanks to all my colleagues, who
contributed in numerable ways in the accomplishment of this project.

Thanking you,

Anant Ekka
Semester VIII

2
 Contents
Acknowledgments... 2

Research Methodology.....4

Objectives......................................................................................................................4

Introduction...................................................................................................................5

Patentability criteria in India.........................................................................................6

Patentability criteria in U.S......................................10

Patentability criteria in U.K. ............................................................14

Conclusion... 18

Bibliography.....17

Webliography................................................................................................................17

3
 Research Methodology
This research project is Non-Doctrinal in nature since it is largely based on secondary &
electronic sources of data and also since there is no field work involved while producing this
research and it involves study of cases and comparison from different books, journal and
other online sources. It is not empirical in nature.

Objective

What is the criteria for patentability in U.K., U.S. and India and its comparative study.

4
 Introduction
A patent is a form of industrial property which may be broadly described as a monopoly right
conferred by the state to an inventor to industrially and commercially exploit his invention at
the cost of making a complete disclosure of the details of his invention. A patent is thus a
statutory privilege granted by the Government to an inventor, and to other persons deriving
their rights from the inventor, for a fixed period of years, to exclude other persons from
manufacturing, using or selling a patented product, or from utilising a patented method or
process. At the expiration of the period of the patent, the patented invention is available to the
general public or as it is sometimes put, falls into the public domain.

In modern usage, the term patent usually refers to the right granted to anyone who invents
any new, useful, and non-obvious process, machine, article of manufacture, or composition of
matter. Some other types of intellectual property rights are also called patents in some
jurisdictions: industrial design rights are called design patents in the US, plant breeders' rights
are sometimes called plant patents. A patent is an exclusive monopoly grant by the govt. of
an inventor over his invention for limited period of time.

Within the context of a national or multilateral body of law, an invention is patentable if it

meets the relevant legal conditions to be granted a patent. By extension, patentability also
refers to the substantive conditions that must be met for a patent to be held valid. The
exact criteria for patentability vary between countries, and vary within countries by whether
you look at patent office granting or court rulings, but the theories behind the general criteria
are quite similar around the world. The general criteria are:

1. new/innovative
2. unobvious or have an "inventive step"
3. useful or have "industrial application"
4. patentable subject matter

However, since Intellectual Property Rights have acquired sufficient jurisprudence the
aforementioned consequences and its solutions reflect in legislations of various countries.
The basic principles relating to patentability, novelty and obviousness of inventive step are of
course common to all patent systems with varying degrees of rigour.

5
 Patentability criteria in India

A patent confers a statutory privilege on an inventor i.e. that there is no common law of
patents. India became a signatory to the TRIPS Agreement in 1995 and as such was bound to
embody the principles contained therein into its domestic intellectual property legislation.

This head deals with the patentability requirements and concepts as per the Patents Act, 1970,
of India. Corresponding statutory provisions in India and other major patent jurisdictions of
the world will also be discussed briefly along with a few case laws which helped define the
judicial provisions for patentability.

The Patents Act, 1970 does not defines what a patent is, instead it just says that a patent
means a patent for any invention granted under the Act, which does not gives a clear picture
about the meaning of the term Patent.

The term Patent as commonly understood by us means an exclusive right granted by the
appropriate government to the person who had made an invention, to use that invention as
well as sell it for a fixed period of time.

The above mentioned exclusive right to use as well as to sell the invention is granted to such
inventor, so as to fulfill the objective of enactment of the Patents Act, 1970 which is also
observed by the Honble Supreme Court in the case of Bishwanath Prasad Radhey Shyam v.
Hindustan Metal Industries 1 , i.e. to encourage Scientific research, new technology and
industrial progress. The grant of such exclusive right to the inventor for a limited period of
time to use and sell his invention for monetary gain encourages the common masses to make
new inventions for the benefit of the country and the society.

The grant of such a patent to the inventor of any invention is only for a fixed or limited
period of time and thus after the expiry of such period, the patented invention passes on to the
public domain.

Now ,since a patent gives an exclusive right to the person to do whatever he wants to do with
his invention for his own benefit to the exclusion of others for a particular period of time
,therefore it is necessary to have a particular criteria to judge whether a particular invention

1
AIR 1982 SC 1444

6
by any person should be patented or not .Therefore ,it is necessary to observe that all
inventions are not patentable and thus an invention can only be patented when it fulfills the
criteria for patentability as per the law.2

India as a signatory to TRIPS, has adopted the trinity requirements as specified therein in
order to ascertain the patentability of an invention. Before considering these requirements in
detail and whether the invention satisfies these requirements, let us consider some pertinent
definitions under the Act.

Patent: patent means a patent for any invention granted under this Act3

Invention: invention means a new product or process involving an inventive step and capable
of industrial application4

Inventive step: a feature of an invention that involves technical advance as compared to the
existing knowledge or having economic significance or both and that makes the invention not
obvious to a person skilled in the art5

Capable of industrial application: capable of being made or used in an industry6

New invention: any invention or technology which has not been anticipated by publication in
any document or used in the country or elsewhere in the world before the date of filing of
patent application with complete specification, i.e. the subject matter has not fallen in public
domain or that it does not form part of the state of the art7

Therefore, the criteria for an invention to be patentable are:

1. Novelty: The first ingredient for an invention is that it must be new product or a new
process. Novelty means what is new and original, never seen or done before. Novelty is a
fundamental requirement and an undisputed condition of patentability. An invention will
not be novel if it has been disclosed in the public through any type of publication
anywhere in the world. An invention is taken to be new if it does not form a part of the

2
www.legalserviceindia.com/article/l300-Patentability-Criteria.html
3
Section 2(1) (m) of the Act.
4
Section 2(1) (j) of the Act.
5
Section 2(1) (ja) of the Act.
6
Section 2(1)(ac) of the Act.
7
Section 2(1)(l) of the Act.

7
 state-of-the-art. As observed by Supreme Court in Bishwanath Prasad Radhey Shyam v.
Hindustan Metal Industries:

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 validity of a patent that it must be the inventors own discovery as opposed to
mere verification of what was already known before the date of patent.

2. Inventive step: An inventive step is one that involves technical advances as compared
to the existing knowledge which makes the invention non-obvious to a person skilled in
the art. In other words, if the invention is obvious to the person skilled in the art, it
cannot be said to involve an inventive step. After the Amendment in 2005, the definition
of inventive step has been enlarged to include economic significance of the invention as
well. To meet the inventive step criterion the patentee will have either have to show that
the invention includes technical advancement or has economic significance or both.

In Bishwanath Prasad Radhey case, the Supreme Court (SC) addressed improvements
and combination patents; where the importance of assessing inventive step in these cases
was outlined. The SC held that in order for subject matter to constitute an inventive step,
the alleged invention should be more than a mere workshop improvement. Furthermore,
in the case of an improvement patent, the improvement must itself constitute an inventive
step. If the alleged invention constitutes known elements or a combination of known
elements, the result must be new, or result in an article substantially cheaper or better than
what existed.

3. Non-obviousness: In order to be patented an invention needs to be non-obvious. The

essential element of novelty and inventive step would depend on the given facts of each
case. If there is no inventive step, it implies that it is obvious.8

In Graham v. John Deere Co.9, the US Supreme court held that obviousness should be
determined by considering at-

a) Scope and content of prior art

b) The level of ordinary skill in prior art

8
Bilcare ltd. v. Amartarapvt. Ltd. 2007 (34) PTC 419(Del) at p. 434
9
(1997) RPC 1, 383 U.S. 1 (1996) at p. 519

8
 c) Difference between the claimed invention and prior art

In addition the court may use secondary considerations such as

i. Commercial success
ii. Long-felt nut unsolved needs
iii. Failure of others

Even though the term obvious has not been defined under the Patent Act, it can be safely
stated to be circumstance where a person of skill in the field, on going through the
specification would complete the product. Therefore even if any of the two ingredients i.e.
technical advance or economic significance or both are available, if such invention enables a
person of skill in the field, on going through the specification would complete the product,
such invention can never be treated as an inventive step and consequently no patent can be
validly issued. Therefore it is clear that a patent must have the characters of novelty,
inventive step and non-obviousness.10

4. Industrial application: It must be capable of industrial application which means the

invention must be capable of being made or used in any industry. In Indian Vacuum
Brake Co. Ltd. V. E.S. Luard11, the court held that mere usefulness was not sufficient to
support a patent.

Industry is to be understood in its broad sense as including any useful and practical, rather
than intellectual or aesthetic, activity. It doesn't include making or using something that is
useless for any known purpose. Processes or articles alleged to operate in a way that is
clearly contrary to well-established physical laws, such as perpetual motion machines, are
regarded as not having industrial application. Although industry includes agriculture, a
process used in agriculture will not be patentable if it is a method of surgery, therapy or
diagnosis practiced on animals or if it is an essentially biological process for the
production of animals or plants.12

10
Law Relating To Intellectual Property Rights, second edition, V.K. Ahuja
11
AIR 1926 Cal. 152
12
www.mylawyer.co.uk/requirements-for-patentability

9
 Patentability criteria in U.S.

Section 101 of the U.S. Patent Act sets forth the general requirements for patent protection.
Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvements thereof, may obtain a patent,
subject to the conditions and requirements of this title.

Unfortunately, the actual test for patentability is a bit more complicated than this sentence
suggests. Under U.S. patent law, an invention is patentable only if it meets the following four
requirements, which are discussed in more detail below:

The invention must be statutory

The invention must be new
The invention must be useful
The invention must be non-obvious
The invention must not have been in public use or sale in the US for more than one
year prior to date of filing the patent application

STATUTORY SUBJECT MATTER REQUIREMENT:

Section 101 of the Patent Act states that processes, machines, articles of manufacture, and
compositions of matter are patentable. At first blush, this wording appears to cover every
conceivable type of invention. To a large extent, this is true. Under this statute, the United
States has one of the broadest standards for what constitutes patentable subject matter in the
entire world. Most inventors do not have to worry about whether their inventions are non-
statutory. However, there are certain inventions that do not fall within Section 101, and
therefore are not the right "type" of invention to qualify for patent protection. These
inventions are considered to fail the "statutory subject matter" requirement for patent
protection, and cannot receive a valid US patent even if they meet the other requirements for
patentability (i.e., even if the invention is new, useful, and non-obvious).13

We know that the statute identifies four types of inventions that are patentable, namely
processes, machines, articles of manufacture, and compositions of matter. If an invention

13
35 U.S.C. 101

10
does not fall within one of these four categories, the invention is not patentable. For example,
data structures that are not claimed in combination with a computer or some type of
computer-readable media are clearly outside of these four categories. So is nonfunctional
descriptive material, such as music, literary works, and compilations or arrangements of data.
It is also clear that electromagnetic waves or signals do not fit into any of these categories,
and therefore are not patentable. Finally, a claim to "software" that is not tied to a process or
a physical machine (such as a computer or mobile device) would also fall outside the four
statutory categories and therefore would not be patentable. In order to avoid this problem,
most experienced patent attorneys will take care never to claim software in the abstract, but
will only claim software in the context of a computing machine or a process.

In addition to falling within one of these four statutory classes, an invention must also avoid a
judicially created "exception" to patentable subject matter if it is to be considered a patentable
type of invention. Recent case law has identified three different exceptions, namely abstract
ideas, laws of nature, and natural phenomenon. The Supreme Court in Alice Corp. v. CLS
Bank International 14 analyzed these three exceptions in some detail. The "abstract idea"
exception to patentable subject matter is particularly important for patents relating to
software, mobile-device apps, and the Internet. Many observers are of the opinion that a large
percentage of software-related inventions are no longer patentable after the Supreme Court's
explanation of the abstract idea exception.

NOVELTY (NEWNESS) REQUIREMENT:

In order for an invention to be patentable, the invention must be considered to be new or

novel. This novelty requirement states that an invention cannot be patented if certain public
disclosures of the invention have been made. The statute that explains when a public
disclosure has been made is complicated and often requires a detailed analysis of the facts
and the law. The most important rule, however, is that an invention will not normally be
patentable if:

the invention was known to the public before the applicant filed for patent protection;
the invention was described in a printed publication before the applicant filed for
patent protection; or

14
134 S. Ct. 2347 (2014)

11
 the invention was described in a published patent application or issued patent that was
filed before the applicant filed for patent protection.

There is an exception to these requirements for disclosures made by the inventor less than
one year before the patent application was filed. This means that there is a one year period
after the first public disclosure or offer for sale of an invention by an inventor during which a
patent application must be filed. This "statutory bar" is unforgiving, which means that an
inventor who does not file for patent protection on her new invention within this one year
grace period will lose all right to obtain patent protection on the invention. In fact, it is
possible that this one-year clock may start "ticking" by something as innocuous as showing
the invention to friends without any obligation of confidentiality.

Although the United States grants the one year grace period described above, most other
countries do not grant such a period. Therefore, it is almost always preferable to file a patent
application before any public disclosure of the invention. Most patent attorneys will try
diligently to file a patent application prior to any public release or announcement in order to
allow international patent filings.

The statute that describes this novelty requirement under U.S. law was significantly revised
by the America Invents Act. Patent applications that were filed on or before March 16, 2013
fall under the earlier version of the statue. Under this earlier version, public disclosures made
by another less than one year before the patent application was filed may not bar an
application if the disclosure was made after the applicant's "invention" date.15

USEFUL REQUIREMENT:

The patent law specifies that the subject matter must be "useful." This means that the
invention must have a useful purpose. Utility is another criteria of USPTO to assess the
patentability. The invention should be useful in order to be patented. If something has no use
for the society or the world, if something is harmful to the mankind, then that is not
patentable. In most cases, the usefulness requirement is easily met in the context of computer
and electronic technologies. The requirement is more important when attempting to patent a

15
35 U.S.C. Section 102

12
pharmaceutical or chemical compound, as it is necessary to specify a practical or specific
utility for the new compound.

NONOBVIOUSNESS REQUIREMENT:

If an invention is not exactly the same as prior products or processes (which are referred to as
the "prior art"), then it is considered novel. However, in order for an invention to be
patentable, the patent statute also requires that the invention be a non-obvious improvement
over the prior art. This determination is made by deciding whether the invention sought to be
patented would have been obvious "to a person having ordinary skill in the art to which the
claimed invention pertains." In other words, the invention is compared to the prior art and a
determination is made whether the differences in the new invention would have been obvious
to a person having ordinary skill in the type of technology used in the invention. The statute
requires that the invention be obvious at a time before the application was filed.16

As can be imagined, the determination of whether a particular change or improvement is

"obvious" is one of the most difficult determinations in patent law. In order to make such a
determination, an examiner in the patent office will normally review previous patent
documents to find those patents and published patent applications that are closest to the
invention for which patent protection is sought. If all the features of the invention can be
found in a single patent, the examiner will reject the patent as lacking novelty (that is, it is
exactly the same as what was previously known and therefore is not new). If no patent
contains all of the features, the examiner will attempt to combine two or more prior patents,
and attempt to find all of the features in a combination of those prior patents. If the examiner
is successful in finding such a combination, the examiner will generally reject the invention
as an obvious combination of items known in the prior art.

Rejections made by combining prior art references are very common in patent applications.
For a combination of references to be successfully used to reject a patent application as
obvious, the patent examiner must provide some reason to combine the references. In the
past, patent attorneys could successfully argue against a rejection by proving that the
inventors of the prior art references would not have looked to combine their invention with
the other invention(s). The Supreme Court's 2007 decision in KSR International Co. v.

16
35 U.S.C. Section 103

13
Teleflex Inc. 17 made it easier for an examiner to successfully combine two references
together in an obviousness rejection. In particular, the Supreme Court said if the combination
of two references yields only predictable results, it would be obvious to combine those two
references--even if neither reference contained an explicit reference that it could have been
combined with the other reference.

Patentability criteria in U.K.

The UK Intellectual Property Office (IPO) has extensive information on the system for
granting patents to protect inventions including details on the application process and
information on applying for patent protection in Europe and internationally.

The patenting of inventions in the UK is covered by legislation and procedures similar to

those of most other developed countries. UK law is harmonised with that of other European
countries and takes into account the terms of the various international conventions to which
the UK subscribes.

It is also possible to get patent protection in the UK via an application at the European Patent
Office (EPO), or following the filing of an international application, under the Patent
Cooperation Treaty

The Patent Act, 1977 of U.K. does not define what constitutes invention as such under Sec.1
of the above statute a patent may be granted only for an invention, which is new, which
involves an inventive step and is capable of industrial application.

Criteria for an invention to qualify for grant of a patent:

To be patentable, an invention must18

be new;
involve an inventive step;
be capable of industrial application;

17
550 U.S. 398 (2007)
18
Patent Act 1977, section 1

14
Novelty:

An invention is new if it does not form part of the state of the art as of its earliest effective
filing date. The state of the art includes anything made available to the public in any form,
typically known as 'prior art'.19

An application must be filed before disclosing the invention in any public or non-confidential
manner. The invention is not new if prior to the application date there has been any non-
confidential:

* Disclosure (including by the applicant or inventor);

* Publication;

* Display, or

* Use of an invention.

A valid application may be filed after such a disclosure only in a few very specific
circumstances, such as breach of an obligation of confidentiality.

Inventive step:

An inventive step is not obvious to a person of ordinary skill in the art, in the light of what is
known from the state of the art. Either of the terms 'involving an inventive step' and
'unobvious' are used. Lack of inventive step is probably the most common reason for refusal
of a patent application.20

The person of ordinary skill in the art ('the skilled person') is:

* A hypothetical person;

19
Patent Act 1977, section 2
20
Patent Act 1977, section 3

15
* involved in the field of the invention, and

* assumed to be aware of all the prior art in this field, but

* Incapable of invention.

Industrial application:

An invention will have industrial application if it can be used in any form of industry,
including agriculture.21 There are two main areas in which this provision is used to reject
patent applications, i.e. inventions that appear contrary to established physical laws, such as
perpetual motion machines, and in biotechnology inventions where there is no specific use of
the claimed invention beyond a general potential utility in the field of biotechnology research.

21
Patent Act 1977, section 4

16
 Conclusion

The concept of patentability is very vague in the paraphernalia of legal concepts.

The patent application may be rejected for several unforeseen reasons. Even if a
patent is granted, it does not necessarily mean that the claimed invention is
patentable. Errors in the granting procedure may occur and prior art may be brought
to light even after the patent is granted.

Although the exact phrases of law differs from country to country, they all aim at
certain common criteria, such as,

(i) It should be of patentable subject matter,

(ii) It must show an element of novelty,
(iii) It must be of practical use,
(iv) It should be non-obvious, means the invention could not be derived by a
person with average knowledge in that field.

The basic conditions of patentability, which an application must meet before it is

granted, are novelty, inventive step and useful.

17
 Bibliography
Law Relating to Intellectual Property Rights, V.K. Ahuja.
Intellectual Property Law, Third edition, P. Narayanan.
Law of Patents, Second Edition, Elizabeth Verkey.

Statutes:
The Patents Act, 1970
U.K. Patent Act, 1977
U.S. Patent Act

Webliography

www.legalserviceindia.com
www.mylawyer.co.uk
www.slideshare.net
www.legaleze.co.uk
www.wipo.int
www.bitlaw.com
www.gov.uk
www.law.cornell.edu

18