1

R. MURALIDHARAN
Advocate, Law Lecturer, Mediator,
Patent and Trademark Attorney

MANU ASSOCIATES
NO.143/4, 8TH MAIN, 14TH CROSS,
ROYAL FORT APARTMENT,
MALLESHWARAM
advrmuralidharan@[Link]/ muralimanu@[Link]
MOBILE-0-944824754
Online Lectures 2

►Patent Law-Competition Law interface- The

Telefonktiebolaget Lm Ericsson case:
[Link]
►Omaprazole Case Study:
[Link]
►PATENTING SKILLS:
[Link]
 Links to Courses 3

►Patent Agent Examination Training:

[Link]
on-training/?couponCode=2234632D2C06DC3AACD6
►Everything About Industrial Property Rights:
[Link]
tellectual-property-rights/?couponCode=60153A01B97
373877EAC
 Links to Courses 4

►Public Interest (Healthcare) Concerns in Indian Patent

Regime:
[Link]
re-concerns-in-indian-patent-regim/?couponCode=A8B
C1B7646CCAE3FB7A2
►Patent Specification Drafting:
[Link]
fting-v/?couponCode=9F5A29ED72D5BAF29197
 Links to Courses 5

►IPR Protections for Software/Computer Implemented

Inventions:
[Link]
onCode=9553166762B7CD00E1A3
►The PepsiCo Potato Problem-Plant Patenting In
India:
[Link]
nting/?couponCode=1A075477DDC19C75E846
 6

Inventions-
Patentable and Non-
patentable
 WISE CRACKS !!! 7

2016
26th April
Murali
1) Where the knowledge is free, into the heaven of freedom, My Father! Let
the country awake ….. R. N. Tagore

2) Patent is a License to a Lawsuit ! …….…T.A. Edison

3) Owning a patent is like owning an elephant -- Guess who – (Y.S)

Modern-day patent 8
Modern-day patent 9
What is the criteria for patentability? 10

The NUNS TEST.

►Novelty (New) Requirement

►Utility (Industrial Applicability)

►Non-Obviousness (Inventive Step)

►Statutory Subject Matter (Not falling within

Section 3 of The Patents Act, 1970)
 11
Understanding ‘novelty’

►Novelty can be ascertained by “prior art search”.

►A good prior art search should examine the
following aspects
►Prior claiming
►Prior publication
►Prior public use.
 12
Understanding ‘utility’

► An Invention is useful when it is capable of Industrial

Application.

► Capability of Industrial Application refers to the invention

being made or used in an industry.

► Industrial Application should essentially produce the same

results every time subject to NTP/STP.
 13
‘Inventive step or non-obviousness’
►Non-obviousness means that it must have
“technical advance” or economic significance or
both. Sec(2(j(a)
►Inventive Step also involves having a feature
which is not obvious to a “person skilled in the
art”.
►The expression person skilled in the art means
a person with an University degree in the
relevant discipline and with about 3 years of
industrial experience.
 14

Understanding ‘non-obviousness’/ ‘Inventive step’

►The Complexity or Simplicity of an inventive
step does not have any bearing on the grant of
the Patent.
Example: The Invention of Coffee Collar or the
Coffee Sleeve can be classified as having
inventive step and should not be confused with
a frivolous invention.
ILLUSTRATION 15
Is it an invention? 16
Is there inventive step in this?
17
Statutory subject matter 18

►An invention falls within the Statutory Subject

Matter if it is not covered by Section 3 of the
Patents Act, 1970.

►Section 3 lists the Inventions which are not

Inventions within the meaning of the Act,
even if they meet the triple requirement of
NUN.
 19
Sec-3 What is not an invention?
The following are not Inventions within the meaning
of this Act:-

(a) An invention which is frivolous or which claims

anything obviously contrary to well established
natural laws;
What is not an invention? 20
 Is this Patentable? 21

Beerbrella: A small removable umbrella

approximately five to seven inches in diameter,
attached to a beverage container in order to
shade the beverage container from the direct rays
of the sun.
 Beerbrella (Cont.) 22

► Suitable advertising and/or logos may be applied to the umbrella

surface for promotional purposes. The umbrella may be attached
to the beverage container by any one of a number of means,
including clip, strap, cup, foam insulator, or as a coaster or the
like.
► The umbrella shaft may be provided with a pivot to allow the
umbrella to be suitably angled to shield the sun or for aesthetic
purposes. to allow the umbrella to pivot out of the way when the
user drinks from the container.
 23
Getting a dimple is not as easy as getting a pimple !

Dimple Drill: An inventor in the year 1986 invented

the Dimple Drill. His claim was that people who were
unhappy because they were not born with dimples
could use this apparatus and get the dimples they
always wanted.
 24
Getting a dimple is not as easy as getting a
pimple !

►This dimple producing device has a rounded

tip made of either ivory, marble or India
rubber.
►To produce the dimple, simply press the
Dimple Drill's tip on the desired dimple
lacking area and turn the knob, rotating the
dull tip on your face, like a drill. The inventor
says it may also be used to nurture and
maintain already existing dimples.
 25

Sec-3 What is not an invention?

►(b) An invention, the primary or intended use

or commercial exploitation of which would be
contrary to public order or morality or which
causes serious prejudice to human, animal or
plant life or health or to the environment;
 Examples of immoral inventions 26

►For Example, Currency Copier used to defraud

people is contrary to public order and falls within
the ambit of this Section.
►Also some invention which enables private
assassination or something which poisons people
or some invention which promotes debauchery is
immoral and is covered by this Act.
 27
Sec-3 What is not an invention?
(c) the mere discovery of a scientific principle or
the formulation of an abstract theory or discovery
of any living thing or non-living substance
occurring in nature.
The Landmark Case ascertaining that a
discovery of nature is not patentable was the US
case of Funk Bros. Seed Co Vs Kalo
Inoculants Co. 75 USPQ 280 (1948)
Funk Bros. Seed Co Vs Kalo Inoculants Co 28

► In this case the product claimed in the Patent was a

composite mixture of six strains of bacteria packaged to be
used to inoculate leguminous plants. The Supreme Court
held that the mixture of the already existing bacteria is not
patentable but a mere discovery of nature
 29

Sec-3 What is not an invention?

(d) the mere discovery of a new form of a known
substance, which does not result in the
enhancement of the known efficacy of that
substance or the mere discovery of any new
property or new use for a known substance or
mere use of a known process, machine or
apparatus unless such known process results in a
new product or employs at least one new reactant.
 30
Sec-3 What is not an invention?
 31

Explanation to section 3 clause (d)

For the purposes of this clause, salts, esters,

ethers, poly-morphs, metabolites, pure form,
particle size, isomers, mixtures of isomers,
complexes, combinations and other derivatives of
known substance shall be considered to be the
same substance, unless they differ significantly in
properties with regard to efficacy. (With Effect
from 01.01.2005)
 Novartis case 32
► In the present case the Swiss pharmaceutical
company Novartis filed a patent application for an
anti-cancer drug — beta crystalline form of Imatinib
Mesylate.
► Gleevec is a blockbuster drug for Novartis prescribed
for blood cancer patients. It was earler known that
Imatinib can treat different forms of cancer and had in
fact received Regulatory Approval.
► Novartis contented that administering Imatinib in a
beta crystalline form increases the bioavailability of the drug
to the patients by about 30%. This increase in bioavailability
according to them constitutes a significant improvement in
efficacy within the meaning of the explanation Sec 3(d)
Novartis case 33
► The office of the controller of patent Chennai held that the Novartis claim to
priority under Paris convention on industrial convention 1883 is incorrect as they
claimed priority form their corresponding Switzerland patent application. Since
Switzerland is not a member of the Paris convention, Novartis cannot validly
claim priority. Furthermore there were sufficient indications that the application
is question is hit Sec 3(d) and its explanation.(25.01.2006)
► Novartis challenged the order before IPAB. Justice Ms Prabha Sreedevan
specifically rejected the contention that even 30% increase in bioavailability
would not be an improvement in its efficacy because the word efficacy there
means clinical or pharmaceutical efficacy meaning the ability of a molecule to
cure a particular disease or disability. In this case the Hon’ble Judge preferred to
adopt the expert’s understanding rather than following the common man's
understanding namely the dictionary meaning of the word. In other words the
Learned Judge chose to adopt mischief rule in interpretation of statutes than
following the golden rule. (26.06.2009)
► The Supreme court upheld the orders of the IPAB and hence this remains a
binding precedent which will be tested again during the future. (01.04.2013)
 34

Sec-3 What is not an invention?

(e) a substance obtained by a mere admixture resulting
only in the aggregation of the properties of the
components thereof or a process for producing such
substance.

Ex. Oral Rehydrating Solution containing Glucose,

Sodium chloride, sodium bicarbonate, and potassium
chloride.
 35
Sec.3:- What are not inventions?
(f) The mere arrangement or re-
arrangement or duplication of known
devices each functioning independently
of one another in a known way;
 ILLUSTRATION : 1
34

3/20/2010
A Battery operated fan enclosed within an
Umbrella 36
 37

Sec.3:- What are not inventions?

(h) a method of agriculture or

horticulture.
(i) any process for the medicinal,
surgical, curative, prophylactic
[diagnostic, therapeutic] or other
treatment of human beings or any
process for a similar treatment of
animals to render them free of
disease or to increase their
economic value or that of their
36
products;
 38

Sec.3:- What are not inventions?

(j) plants and animals in whole or any part thereof other than micro
organisms but including seeds, varieties and species

and essentially biological processes for

production or propagation of plants and

animals;

37
 38
Speaking Roses International Inc. vs Controller-
General Of Patents And Anr.
► Speaking Roses international Inc., had on September 19, 2002, applied
for a patent for “providing an image on an Organic Product, being a
flower or a fruit ”. Subsequently, they were given the First Examination
Report (FER) as well as the Second Examination Report (SER), both of
which they had replied to and complied with.

However, by an order dated April 19, 2006, the Respondent had rejected
said application on the following 5 major grounds.

The first ground of rejection consisted of the allegation that the

application was in contravention of Section 3(j) of the Patents Act, 1970.
 39
Speaking Roses International
Inc. vs Controller-General Of
► Patents
The aforesaid And(a)Anr.
section, in its sub-clauses to
(p), enumerates what cannot be considered as
inventions and as per sub-clause (j), such
exclusion extends to “Plants and animals in
whole or any part thereof other than micro-
organisms but including seeds, varieties and
species and essentially biological processes for
production or propagation of plants and
animals.” This sub-clause thus does not allow
grant of patent for plants or for any biological
processes for production or propagation of
plants.
 40
Speaking Roses International
Inc. vs Controller-General Of
Patents And Anr.
► However,Justice Ms Dalvi held that from the very application of the
Petitioners, it became apparent that the patent sought was not for
any flowers or organic products, but for providing an Image on an
organic product. Hence it was not a plant that was being sought to
be patented. Furthermore, such image was to be created by a
mechanical process and not a biological one. Therefore, the claim
did not fall within the scope of the aforesaid Section 3(j).
 41
Sec.3:- What are not inventions?

(k) a mathematical or
business method or a
computer program per se
or algorithms;

41
 Sec.3:- What are not inventions? 42
(l) a literary, dramatic,
musical or artistic work
or any other aesthetic
creation whatsoever
including
cinematographic works
and television
productions;
 Sec.3:- What are not inventions?
(m) a mere scheme or rule
or method of performing
mental act or method of
playing game;

43

44
 44
Sec.3:- What are not inventions?

(n) a presentation of
information;

(o) topography of integrated

circuits;
 45
Sec.3:- What are not inventions?

(p)an invention which, in

effect, is traditional
knowledge of which is an
aggregation or duplication
of known properties of
additionally known
component or components.
46
 ACKNOWLEDGEMENTS 47

1. WIPO website
2. Indian Central Statistics Office website.
3. Online Economic Times
4. Swapna Chandramouli (Bombay Law College)& Adv. Anupama S Pillai & Adv Santosh Kumar B.C
5. Wikipedia website
6. [Link]
[Link]
“No duty is more urgent than 49
that of returning thanks.”