IPR

There are main three requirements of IPR 1. Novelty2. Non-obvious3. Utility

Novelty : Related to technology, Should not be published or should not be used anywhere in the world.

i) Important Case laws on Novelty: (1) Raj Prakash v. Mangat Ram Chowdhry and Others: In

this case the Delhi High Court stated that in order to prove the invention non- novel, a prior use or prior publication of the invention is required. A mere possibility of the existence of the invention is not considered. The Delhi High Court further held that to prove anticipation, a single prior art was necessary that should contain all the elements of the invention. Thus, no anticipation was found and the novelty of the invention was upheld.

(2) Laxmi Dutt Roop Chand v. Nankau and Others: In this case, the patentee held a patent for the casting of hallow-ware metallic utensils or like with the neck of the metallic utensils narrower than the belly. Also,the patent claimed that the metallic utensils were madein one piece (i.e. joint less). Further, moulds for making the metallic utensils were also covered. The patent was challenged by the defendants on grounds thatit lacked novelty as the preparation of jointless hallow-ware was very well known to the people of Bandhua (where the defendants reside) for the past twenty five years. The Allahabad HC examined the fact before it confirmed that manufacturing hollow- wares was part of the prior public knowledge in Bandhua from times immemorial. Thus, the Court affirmed that the invention lacked novelty.

Exceptions where prior art does not bar “novelty”: Section 29to33 of the Patents Act)

i) If such invention was published in a patent publication filed before January 1, 1912, or

ii) In case a person publishes an invention without the consent of an application- company or true and first inventor and later the applicant files a patent application, such previous publication would not count asprior art. Example: Prof Verma invented a flying robot. During development of the same, one of his students without informing him files a patent application at the Indian Patent Office. Prof. Verma, oblivious to this fact, also files a patent application for the same invention subsequently. In this case, if Prof. Verma can prove thathe had invented the flying robot and that the student hadfiled the patent application without taking his consent, then the student’s application will not act as a prior art to Prof. Verma’s application.

Prior communication to the government: If the invention has been disclosed to the government (for example, for investigation purposes) before filing a patent application, such disclosure will not act as anticipatory evidence or priorart. Example: in the above example – Prof. Verma invented a flying robot- Government requests him to submit a working prototype immediately in one of its departments as it feels the invention can be used for surveillance at the border. Submission of a flying robot by Prof. Verma to the government department will not act as a prior art if Prof. Verma pursues a patent application for his invention.

Prior Public display in exhibitions notified by the Governmentof India. The application of Patent has to be filed within 1

year from the date of exhibition or publication of paper. Mostcommon examples of this kind are when investors demonstrate their inventions in exhibitions even before filing a patent application. They can avail the 1 year grace period from the date of such demonstration to make the filing.

Prior Public Working: if the nature of the invention is such that it requires testing the invention for the purposes of reasonable trial, then working of such invention as is reasonably necessary before filing a patent application is notconsidered for anticipatory purposes. However, the applicationfor patent should be filed within 1 year from the priority date of the relevant claim. If such invention are sold commercial scale and later tries to fall back on this provision, the application will be refused.

Use or publication after filing application: Use of Publication of an invention after filing a provisional specification/convention application for the same is permittedand cannot be cited as a reason for rendering the application non-novel during examination.

Obviousness: Of the entire requirement to be patentable, determination of invention to be patentable, determination of inventive step or non-obviousness is most tricky. S. 2(1)(j)(a) of the Patents Act provides for inventive step as a feature of an invention that involves a technical advancement compared to the existing knowledge or having economic significance or both and that make the invention not obvious to a person skilled in the art.

1. Example: A Publication (“Pub 1”) explains the usefulnessand technology involved in real-time dissemination ofcritical information using SMS. It also explains how thiscan be done. A second publication (Pub2) mentions thatthere is a problem due to the delay in getting to knowthe status of reserved tickes. Vivek files a patentapplication for a method of disseminating ticket

reservation information in real time using SMS. Hisinvention will not be patentable in the light of pub 1and Pub 2, as his invention will be considered obivious.Please note that neither Pub 1 Pub 2 discloses theinvention as a whole but mosaicing the two makes theinvention obvious.

2. The only exception to this rule would be Indianapplications that were filed before but published on orafter the date of filing of provisional/completespecification of the instant application as priorclaiming.

Case Laws for obviousness: Bishwanath Prasad Radhey Shyam v.Hindustan Metal Industries: Landmark Judgment: Principalslaid down in the case are followed even today and have beencodified in the Patents Act: The plaintiff (HindustanIndustries) had obtained a patent under the Indian Patentand Designs Act,1911 on May6, 1951for a device and methodfor manufacturing utensils that was an improvement over theexisting art and as a result the Manufactured utensils had abetter finish and could be manufactured without risk to theworkers, in as much as the utensils used to fly off from theheadstock, during the conventional manufacturing process.The plaintiff learnt the defendant (Bishwanath) used theclaimed process to manufacture utensils and served notice tocease production of utensils. The defendant continuedproduction, post which, the plaintiff sued the defendant inthe District Court of Allahabad. The defendant filed acounter claim for the revocation of the plaintiff’s patentand also challenged the validity to the patent and alsochallenged the validity to the patent as lacking in noveltyand inventive step. Therefore, the case was transferred tothe High Court. The HC found the invention to be lacking ininventive step and therefore, revoked the patent. Post this;an appeal was filed at the Supreme Court of India.

With regard to inventive step, the SC stated that theinvention “should be something more than a mere workshopimprovement and the improvement or the combination mustproduce a new result, or a new article or a better orcheaper article than before. The combination of old knownintegers maybe so combined that by their working interrelation they produce a new process or improved result.Looking at the reference cited by the defendant and whatcommonly used in the area, the SC affirmed that theinvention lacked inventive step. Further, given that thepatent holder used the invention publicly before the date offilling of the patent application, the SC held that theinvention was anticipated too.

Non - Patentable Inventions - Section 3 and 4

Frivolous inventions/inventions against natural laws: Inventions that do not have any real possibility to be implemented may be termed as frivolous inventions.

Inventions contrary to public order or morality: an invention the primary or intended use or commercial exploitation of which could 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 patentable. A scientific principle or a theory or a discovery cannot form subject matter of patentable invention. It is understood that either such knowledge is known or naturally exists and just needs to be realized. There is no creativity or inventive ingenuity invoved, for instance, Newton’s law of motion.

New form or new property or new use: The patent Act aims at preventing ever greening and denies patent cover to pharmaceutical inventions with trivial or insignificant changes, unless they result in enhancement of efficacy (functional) of a known substance. In Novartis v. Union of India interpreted the word efficacy as functional. If there is increase in the efficacy then the substances are patentable. It is also said that Disclosure refers to enablement provided in description while coverage refers to the coverage of a patent as provided by its claims. Example: An invention that claims to be a combination of a

paracetamol and a pain reliever is not patentable unless there is some synergetic effect, i.e. the combination produces an effect that is beyond treating fever and pain.

Mere arrangement or rearrangement of devices: Example: An invention consisting of a radio attached to a car is barred under this section as it is a mere rearrangement of two known devices- radio and car. However, if the attaching of the radio to the car requires experimentation and ingenuity,

it may then be patentable if it satisfies the patentability criteria.

Method of Agriculture or Horticulture Medical methods Plants and animals: Exception microorganisms are patentable.

In addition micro-biological processes are patentable. For instance, a new variety of a plant is not patentable.

Mathematical/business methods, algorithms and computer programs: Exception: It is possible to obtain a patent for software functionality if the patent application discloses the invention being embedded in hardware. Example: A method of processing image is patentable. It is treated as though it is software programme- functionality accomplished by the software is a result of functioning of the hardware. However codes of computer programs are protected under the Indian Copyright Act, 1957.

Copyrightable Works: Anything that is copyrightable under the copyright Act, 1957 cannot be patentable.

Mental Act Presentation of Information Integrated Circuits: Provided protection under;

Semiconductor Integrated Circuit Layout Designs Act, 2000 Traditional Knowledge Atomic Energy: The application filed in this field is

referred to the Department of Atomic Energy, Government of India and their decision in the matter is final. No appeal lies against the order passed by the department of Atomic Energy, GOI.

The Patent Application

Patent Prosecution-I

Patent Prosecution - II

Patent Infringement