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Notes

Criteria for granting Patents

The criteria of patentability are central to determining whether an invention can be granted patent protection. Under the Patents Act, 1970 in India, and generally in patent law worldwide, these criteria include:

  1. Inventiveness (Novelty):

  • Definition: An invention must be new or novel; it should not have been known, used, or described in any prior public disclosure anywhere in the world before the filing or priority date of the patent application.

  • Assessment: Novelty is assessed by comparing the invention with the ‘prior art’, which includes everything disclosed to the public in any form before the priority date. If the invention is anticipated by prior art, it lacks novelty.

  • Public Disclosure: This includes publications, patents, public use, or any form of disclosure that makes the invention accessible to the public.

  1. Non-Obviousness (Inventive Step):

  • Definition: The invention must not be obvious to a person skilled in the art at the time the invention was made. It should show a non-trivial advancement over existing technology.

  • Test for Non-Obviousness: In India, Section 2(1)(ja) of the Patents Act defines an “inventive step” as a feature of an invention that involves technical advance as compared to existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.

  • Person Skilled in the Art: This is a hypothetical person with average knowledge and skill in the relevant technical field, who is aware of all the common general knowledge but is not particularly inventive or creative.

  1. Utility (Capability of Industrial Application):

  • Definition: The invention must be capable of some kind of practical use or must have some beneficial effect. It should be able to be made or used in any kind of industry, including agriculture.

  • Utility Requirement: The invention must work as described in the patent application; it should perform the function claimed. This does not mean it must have commercial success, but it must have a plausible, described use.

  • Industrial Application: In India, Section 2(1)(ac) defines “capable of industrial application” as an invention being capable of being made or used in an industry.

Additional Considerations:

  • Synergy of Criteria: All three criteria must be satisfied for patentability. An invention might be novel but if it’s obvious or lacks industrial application, it won’t qualify for a patent.

  • Exclusions: Certain types of inventions are excluded from patentability regardless of these criteria (e.g., methods of agriculture, certain software, or inventions contrary to public order or morality).

  • Documentation: The patent application must adequately describe how the invention meets these criteria, including how it compares to prior art, the inventive step, and its utility.

Legal Practice:

  • Examination: Patent offices examine applications based on these criteria. Applicants might need to argue or provide evidence to establish novelty, non-obviousness, and utility.

  • Opposition: Both pre-grant and post-grant oppositions can challenge the patentability on these grounds, leading to reevaluation or cancellation of a patent.

  • Case Law: Judicial interpretations in various jurisdictions can further define how these criteria are applied, often influenced by technology-specific considerations.

The balance between encouraging innovation through patent protection and ensuring that patents do not unduly restrict further innovation or access to technology is at the heart of these criteria. They ensure that only truly novel, non-obvious, and useful inventions receive the benefits of patent protection.