(Important note: Though this post is
fairly long, it thoroughly discusses the concept of “invention” under Patents
Act, 1970. Starting from the basic understanding of the concept, the post
culminates its discussion on the landmark decision of the Supreme Court of
India in Novartis AG v. Union of India)
Invention:
A historical background prior to the enactment of Patents Act, 1970
In 1947, when India was released from rule of
British Government, the country was still dominated with a patent regime favourable
to multinationals abroad. Though much has changed since then, Indian patent
jurisprudence is still witnessing ups and downs. To the core of the patent law
lies an ‘invention’ which, according to Black’s Law Dictionary, means an act or
operation of finding out something new. Defining this ‘something new’ has, even
in 21st century, remains the most problematic issue under Indian patent
law.
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The old patent regime, which was governed by Indian
Patents and Designs Act, 1911 (“Old Act”), defined
an invention as ‘any manner of new manufacture
and includes an improvement and an alleged invention’.[1] According
to the Old Act, term ‘manufacture’ included
‘any art, process or manner of producing, preparing or making an article, and
also any article prepared or produced by manufacture’.[2] That
is, in order to qualify as an invention under the Old Act, there should have been an
existence of a new art, process or manner of producing.......any article
prepared or produced by manufacture.
By not defining what is ‘new’, the definition had provided
space for the existence of ambiguity. Could minor changes be considered as ‘new’,
and hence, sufficient for patent protection? A similar problem still exists
under the Patents Act, 1970 (“1970 Act”) while defining 'inventive step'.
While the definition of invention under the Old Act did not provide that the
patented invention should be useful, the Supreme Court of India (“Supreme
Court”), in Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, stated
that courts have generally held that an invention must be useful.[3]Under
the 1970 Act, it was provided that an invention should be useful (originally enacted
definition).
After independence, efforts were made to bring
patent law in conformity with the then social and economic condition of India. Considering
the importance of patent law in the growth of an economy, a committee, under
the chairmanship of Justice Baksi Tek Chand,[4] was
set up to review patent law in India. Though the recommendations of the
committee led to amendments in the Old Act, a major change in the patent law
was still lacking. Following the pathetic progress of inventions in Indian pharmaceutical
and other industries, again a committee, under the chairmanship of Justice N.
Rajagopala Ayyangar Committee, was set up. Following the recommendations of
Ayyangar Committee, the 1970 Act was enacted. Here, I do not intend to go into
the flaws of Old Act which led to enactment of 1970 Act. Instead, I will now
explain the issue of ‘invention’ under the 1970 Act.
What
is an ‘invention’ under Patents Act, 1970: Journey till TRIPS Agreement
1970 Act, which was enacted more than 20 years
before The Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPS
Agreement”), abolished product patents. The originally enacted Section 2(j) of
the 1970 Act defined an ‘invention’ as:
“any new
and useful- (i) art, process, method or manner of 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”
Section 5 of the originally enacted 1970 Act,
however, provided that no patent shall be granted for substances as regards
food, medicine, drugs, chemical process etc. Section 5, which was the part of
Chapter II, is now omitted by an amendment in 2005. The section clearly reflected a policy
decision of Indian Government which, in 1970s, was taken to improve the economy
of India. Though a substance may qualify as an invention, no patent could have
been granted to it under the original 1970 Act. The exclusion helped Indian
pharmaceutical industry so much so that it became one of the largest
pharmaceutical industries in the world.
For understanding the meaning of an ‘invention’, it may be important to look at the observation of the
Supreme Court in Bishwanath Prasad Radhey Shyam (supra), the case which was
decided in the year 1978. Though the case dealt primarily with the Old Act, i.e., 1911 Act, it is nonetheless important to see the observation of the court. In this case, it was held by the court:
“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. The combination of old
known integers may be so combined that by their working inter relation they
produce a new process or 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....”
If the claimed object is obvious, there cannot be
any inventive step, and hence, no patent can be granted for it.[5]In a
case decided by Delhi High Court, it was held that an invention, as is
well-known, is to find out something or discover something not found or
discovered by anyone before.[6]While
claiming patent for an invention, it was essential that the party claiming patent
should specify what particular features of his device distinguish it from those
which had gone before and show the nature of the improvement which is said to
constitute the invention.[7]
The above cases, and legal position, deal with a
time when TRIPS Agreement was yet to be entered into. It can be seen that though
product patent was not available in India, the conceptual understanding of
invention was nonetheless improving. Having seen the scope of invention under
the original 1970 Act and some important precedents under 1911 Act, let us now see the implication of TRIPS Agreement on
Indian Patent Jurisprudence.
TRIPS
Agreement and how it affected the interpretation of ‘Invention’ under Indian
Patent Law
TRIPS Agreement, which is Annex 1C of the
Marrakesh Agreement Establishing the World Trade Organization,[8]
significantly changed the patent jurisprudence in India. The country, which had
been able to boost its pharmaceutical sector by rejecting ‘product patent’, had
to make many compromises. Article 27 of the TRIPS Agreement provided that
patent shall be available for ‘any invention’, whether product or process. Being binding in nature, India had no
option but to amend its patent law. Following TRIPS Agreement, the amended the
definition of ‘invention’ which can now be read as:
“.....new product or process involving an inventive step and capable of
industrial application”
Section 2(1)(ja) of the amended 1970 Act defines
an ‘inventive step’ as:
“..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 art”
Section 2(1)(ac) of the amended 1970 Act defines ‘capable
of industrial application’ as:
“....in relation to
an invention, means that the invention is capable
of being made or used in an industry”
Though TRIPS Agreement provided that an invention
should be new, involves an inventive step and capable of industrial
application, it did not define the term ‘inventive step’ or ‘capable of
industrial application’. However, TRIPS Agreement, by means of a footnote, provided
that "inventive step" and "capable of industrial
application" may be deemed to be synonymous with the terms
"non-obvious" and "useful" respectively. Because of this,
From the definitions, it can be seen that an
inventive step would be that feature of an invention which (i) technical advance, or (ii) have some economic significance. At the same time, in
order to qualify as an inventive step, the concerned feature of invention ‘should not be obvious to a person skilled
in the art’. Because of its subjective nature, non-obviousness of an
inventive step will depend on the nature of invention. While ‘inventive step’
emphasises on economic significance of an invention, ‘capable of industrial application’
emphasises on its usage in an industry. Since economic significance is quite
related to the working of an industry, there is also a possibility of an overlap
between 'inventive step' and 'capable of industrial application'. [This should not be of much problem,
though!]
There is yet another issue with an invention. Even
if something qualifies for invention under Section 2(j), one has to further see
whether the concerned invention is prohibited under Chapter II of the amended 1970
Act. Chapter II, which has the heading ‘Inventions not Patentable’, provides a
list of situations where patent will not be granted. While some of these
exclusion conditions find mention in TRIPS Agreement (example, invention
prejudicial to plant and animal), other exclusion conditions do not find any
such mention [example, controversial Section 3(d)].
In the next and the last part of this post, while
discussing the decision of the Supreme Court in Novartis AG v. Union of India,[9] I will
explain the provisions of Chapter II of amended 1970 Act.
Novartis
v. Union of India: A Landmark Decision for Patent Jurisprudence in India
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On April 1, 2013 (ironically, April Fool’s Day!), Supreme
Court delivered the landmark decision in Novartis AG v. Union of India (supra).
Novartis, a Swiss multinational pharmaceutical company, had approached the Supreme
Court for claiming patent over ‘beta crystalline form of Imatinib Mesylate, i.e., Glivec’
(“impugned product”). The appellant had filed Special Leave Petition against
the order of Intellectual Property Appellate Board (“IPAB”) which had held
that, though the impugned product satisfied the test of ‘novelty’ and
‘non-obviousness’, its patentability was hit by Section 3(d) of the Patents
Act. In the opinion of IPAB, by introducing amended Section 3(d), a higher standard of inventive
step has been provided in India. Before the Supreme Court, it was contended by the appellant
(“Novartis AG”) that impugned product amounts to an ‘invention’ because it has
characteristics such as more beneficial flow properties, bioavailability,
better thermodynamic stability etc.
In order to determine the legislative intent
behind clauses (j) [defines ‘invention’] and (ja) [defines ‘inventive step’] of
Section 2(1) and amendments to Section 3 of the amended 1970 Act, the Supreme
Court comprehensively discussed the history of Patent Law in India. Explaining
the meaning of Section 2(ja), the Court stated that:
“...To
paraphrase, the invention that creates the product must have a feature that involves
technical advance as
compared to the
existing knowledge or
having economic significance or both and this feature should be such as
to make the invention not obvious to a person skilled in the art.”
Interestingly, the Court was of the opinion that ‘invention’ and ‘patentability’ are two
different concepts (emphasis supplied).
That is, a subject, in order to get patent, should qualify the twin tests
of invention and patentability. While saying so, court held that:
“...Something
may be an “invention” as the term is generally understood and yet it may not qualify as an “invention”
for the purposes of the Act. Further, something may even qualify as an
“invention” as defined under the Act and yet may be denied patent for other
larger considerations as may be stipulated in the Act...”
While interpreting Section 3, whose heading reads
as ‘What are not invention’, it was held by the court that the section contains provisions of two kinds: (i) provisions where certain things shall
not be deemed to be ‘inventions’ [clause (d) & (e), for example], (ii)
provisions where certain things, though resulting from an invention, may not be
granted patent for other considerations [for instance, clause (b)]. While
interpreting Section 3(d), which was at issue in the case, Court held that the
section represents ‘patentability’, a concept distinct and separate from an
invention:
“....The amended
portion of section 3(d) clearly sets up a second tier of qualifying standards
for chemical substances/pharmaceutical products in order to leave the door open for true and genuine inventions but, at the
same time, to check any attempt at repetitive patenting or extension of the
patent term on spurious grounds.”
Court further said that Section 3(d) can be considered
as an exception to the definition of ‘invention’. In the opinion of the court,
the Patents Act appeared to have created different standards or qualifying as
“inventions” things belonging to different classes. Thereafter, the court
focused on the interpretation of Section 3(d) which, in this post, I am not exactly
concerned with.
From above, it can concluded that even if the
subject qualifies the conditions of an invention under Section 2(j) of the
amended 1970 Act, the same still have to qualify the conditions mentioned under
Chapter II. In this post, I do not intend to indulge in the critique of
Novartis Judgment (supra) and hope that the post would have been able to explain
the issue of invention under Indian Patent Law.
For downloading the judgment of Novartis AG v. Union of India, click here. For downloading the Indian Patents and Designs Act,1911, click here .For downloading TRIPS Agreement, click here. For downloading the Patents Act, 1970, click here.
(I have pursued the optional course of Advanced (Indian) Patent Law & Policy at National University of Juridical Sciences, Kolkata. For queries, you can send an e-mail to abhinav.s@nujs.edu)
[1] Section 2(8), The Indian
Patents and Designs Act, 1911
[2] Id, Section 2(10)
[3] Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979)
2 SCC 511
[4] The then retired judge of Lahore High Court
[5] Press Metal Corporation
Limited v. Noshir Sorabji Pochkhanawalla and Anr., AIR 1983 Bom 144
[6] Raj Parkash v. Mangat Ram Chowdhry and Ors., AIR 1978 Delhi 1, Here, the High Court was concerned with the definition of patent under
1911 Act. (Court held that “The invention for which patent is claimed may be a
product or an article or a process. In the case of an article the patent is in
the end product or the article; in the case of a process, the patent docs not
lie in the end product, but only in the process by which it is arrived at.”)
[7] Ram Narain Kher v. Ambassador Industries New Delhi and Anr., AIR 1976
Delhi 87
[8] Marrakesh Agreement establishing
the World Trade Organization (with final
act, annexes and protocol). Concluded
at Marrakesh on 15 April
1994
[9] Novartis AG v. Union of India,
(2013) 6 SCC 1
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