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Patentability requirements in India

By  Ranjan Matthew
This article aims to provide an introduction to patentability requirements and concepts relating to evaluation of inventive step 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 and inventive step.

Patentability and inventive step

The Patents Act, 1970 (hereafter referred as ‘the Act’) of India specifies the provisions that are used by the Indian Patent Office and the courts to determine whether a product or a process is worthy of a patent in India. The Act, vide Section 2(1)(m), provides that a patent may be granted for an “invention”. Further, the definition of “invention” is provided under Section 2(1)(j) of the Act as a new product or process involving an inventive step and capable of industrial application.
The three terms ‘new’, ‘inventive step’ and ‘industrial application’, provide the three main criteria for patentability. Accordingly, before applying for a patent, applicants must ensure that their inventions, prima facie, are novel, involve an inventive step, and can be used in or by the industry. Additionally, the Act, under Section 3, also provides a list of inventions that are specifically barred from being patentable even if they meet the aforementioned criteria and so, it is important that the applicants also ensure that their inventions do not fall under Section 3. The criteria related to novelty and industrial applicability are generally regarded as being well defined and understood based on the Act. However, the patent office, practitioners, courts and patentees often grapple with the concept of inventive step.
The Act defines the term ‘inventive step’ under Section 2 (1)(ja) 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”. Apart from the presence of an inventive step being a necessary condition for patentability, a lack of inventive step is a valid ground for opposition under Sections 25(1)(e) and 25(2)(e), and for revocation under Section 64(1)(f) of the Act.
As per the definition of inventive step as set out under Section 2(1)(ja), a feature of an invention can be considered to possess an inventive step if it satisfies two conditions: (i) the feature either adds to existing technical knowledge, i.e., the prior art, or is substantially better in terms of commercial viability; and (ii) it makes the invention non-obvious to a person skilled in the art.
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