Conditions to be satisfied by an invention to be Patentable

Patentability Criteria

1. Conditions to be satisfied by an Invention to be Patentable Patentability Criteria Amandeep Singh Assistant Professor, Department of Biotechnology Khalsa College, Patiala.

2. Conditions to be satisfied by an Invention to be Patentable Novelty Non-obviousness Industrial application

3. Introduction Invention: By Section 2 (j) of Indian Patent act, 1970 “Invention” means a new product or process involving an inventive step and capable of industrial application . New product (Novelty) Inventive step (Non-obviousness) Industrial application (Use)

4. New Invention By section 2 (l) “New invention” means 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 the 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 art . State of the art : very modern and using the latest ideas and methods. For example, The center is 20 years old and will need capital improvements to remain state-of-the-art.

5. Invention should not form a part of the global state of the art. Novelty is assessed in a global context. Novelty is assessed through extensive literature and patent search . Patent search : Patent search is essential and critical for ascertaining novelty, as most of the information reported in the patent documents does not get published anywhere else.

6. Maintaining Novelty Maintaining secrecy No media discloser, no journal publication, no web discloser or magazine publication Should not be considered as common knowledge by the concerned field experts No sale or display before filing of patent application Should not be the part of prior art Inventor must check the search reports

7. Maintaining Novelty Prior art Prior art is any evidence that your invention is already known. Prior art does not need to exist physically or be commercially available. It is enough that someone, somewhere, sometime previously have described or shown or made something that contains a use of technology that is very similar to your invention.

8. Maintaining Novelty For novelty to be maintained the inventor must first check the search reports

9. Non-Obviousness Not obvious Not immediately apparent or such as would ordinarily be expected; (specifically in patent law) not disqualified by obviousness from being patentable. Occasionally as noun: that which is not obvious

10. Inventive step Section 2 (ja) defines “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that invention not obvious to the person skilled in the art.

11. Non-Obviousness ( Inventive step) Section 2 (ja) defines “ inventive step ” 1. T echnical advance as compared to the existing knowledge 2. H aving economic significance 3. Or both 4. I nvention not obvious to the person skilled in the art. Whether the invention is an adequate distance beyond or above the state of the art

12. PHOSITA P erson H aving O rdinal S kill I n T he A rt PHOSITA: It is a fictional person who have a normal s kill and knowledge in a particular technical field. He or She is not a genius, Just a person skilled in the art.

13. Example An Indian Patent application process for extracting of neem oil from neem seeds Steps: Crushed neem seeds Soxhlete solvent extraction Polar solvent Temperature: 40-60 degree C Oil cake free from bitter and odoriferous constituents Drying the oil cake solvent extraction

14. Opposition Book entitles the “ Oil extractions ” Extraction of kernels (seeds) with 70% of alcohol to remove bitter and odoriferous compounds hexane extraction to recover good quality of oil. Argument Such type of extraction is always done between 40-60 degree C. Decision The invention was held obvious on the basis of expert opinion as the person skilled in that can carry out extraction. Very common in the oil extraction industry.

15. Industrial application An invention must possess utility for the grant of patent. No valid patent can be granted for an invention devoid of utility.

16. Patentable Inventions under the Patents Act, 1970 a) Art, process, method or manner of manufacture. b) Machine, apparatus or other article, Substances produced by manufacture , which include any new and useful improvements of any of them and an assumed invention. c) However, inventions claiming substance intended for use, or capable of being used, as food or as medicine or drug or relating to substances prepared or produced by chemical processes (including alloys, optical glass, semiconductors and inter-metallic compounds) are not patentable.

17. Types of Inventions which are not Patentable in India An invention may satisfy the conditions of novelty, inventiveness and usefulness but it may not qualify for a patent under the following situations: a) An invention which is frivolous (not having any serious purpose) or which claims anything obviously contrary to well established natural laws e.g. different types of perpetual motion machines . b) An invention the primary or intended use of which would be contrary to law or morality or injurious to public health e.g. a process for the preparation of a beverage which involves use of a carcinogenic substance, although the beverage may have higher nourishment value. c ) The mere discovery of a scientific principle or formulation of an abstract theory e.g., Raman Effect. d) The mere discovery of any new property or new use of known substance or the mere use of a known process, machine or apparatus unless such a known process results in a new product or employs at least one new reactant . 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. f) The mere arrangement or rearrangement or duplication of features of known devices each functioning independently of one another in a known way . g) A method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient. h) A method of agriculture or horticulture . i ) Any process for medical, surgical, curative, prophylactic or other treatment of human beings , or any process for a similar treatment of animals or plants . j) Inventions relating to atomic energy .

18. Perpetual motion machines Invention injurious to public health Mere discovery of a scientific principle New use of known substance Mere admixture Duplication/rearrangement of features of known devices Method of agriculture Process for medical treatment Inventions relating to atomic energy Non-Patentable Inventions in India