Non-patentable subject matter under Indian Patent Act.

1. Amrendra Kumar Ajit
(Assit.Professor of Law)
National Law University Orissa, Cuttack
India-753008
© NLUO2011

2. Only fulfillment of three prerequisites (N IS U) are not
enough for granting the patent to an invention.
An invention must not be come under non-patentable
criteria .
(N+IS+U)+PSM= Patent

3. . Municipal laws relating to patent provide the list of
non-patentable invention.
.No definite criteria for exclusion.
.But list may be categorised on three criteria….
(i) matters which are incapable of being the subject of
legal monopoly,
eg. like an invention contrary to established natural
law.

4. (ii) matters excluded by policy or morality
eg. Invention relating to atomic energy and
human cloning.
(iii) Matters which are protected by others
form of IPR
eg. Copyright.

5. IN EPC + UK IN USA
ART.52(2),ART.1(2)n(3) - no such list in US CODE 35.
- depend upon judicial
-discoveries, scientific theories and
mathematical methods precedent and specific
- aesthetic creations; legislation.
- schemes, rules and methods for O’ Reilly vs Moore
performing mental acts, playing 56 US (15HOW)6,132(1853)
games or doing business, and Held- Patent can’t be granted
programs for computers
on plant and animal due to…
i) it will provide exclusive right
ii) unjust enrichment
iii) Lockean labour philosophy

6. - presentations of information. Diamond vs Chakraborty
447 US 303(1980)
issue- patent for genetically
- Methods for treatment of the
human or animal body by engineered bacterium cap-
surgery or therapy and able breaking down crude
diagnostic methods practised oil.
on the human or animal body - patent was granted as human made
“manufacture” or “comp-
osition” of matter.
Anything under the sun made by
man is patentable.
- Chimera issue

7.  ART.53 Now excluded matter
- inventions the publication or .products of nature
exploitation of which would be .laws of nature
contrary to "ordre public" or .printed matter
morality .atomic weapons (under
- plant or animal varieties or the Atomic Energy Act)
essentially biological processes
for the production of plants or .mental step
animals; this provision does not
apply to microbiological
processes or the products
thereof.

8. Sections 3 and 4 of The Patent Act 1970
sec 3(a)- Frivolous inventions or contrary to natural laws.
eg. a perpetual motion machine:- as it contravene the laws
of physics

9. b) Primary or intended use or comm ercial exploitation of
which could be contrary to Public order or m orality or
which causes serious prejudice to human, animal or plant life
or health or to the environment . For example,
o Gambling machine, device for house-breaking,
o Biological warfare material or a device, WMD
o Onco- mouse case, embryonic stem cell
o Terminator gene technology,

10. C ) Mere Discovery of a Scientific Principle
or Formulation of an Abstract Theory
or discovery of any living thing
or discovery of non–living substance occurring in
nature
Discovery adds to the human knowledge by
disclosing something ,not seen before, whereas,
Invention adds to human knowledge by suggesting
an act to do which results in a new product or new
process

11. e.g. Archimedes Principle, Superconducting
Phenomenon etc as such – not patentable ,
However, An apparatus/method for technological
application may be patentable
A property of certain material to withstand
mechanical shock is not patentable,
but A claim to a railway-sleeper made of that
material may be patentable

12. Discovery of a substance, freely occurring
in nature is not patentable
However,if that substance is first to be
isolated from its surrounding and a process for
obtaining it is developed , the process may be
patentable
Discovery of m icro-organism Discovery of natural
,
gas or a m ineral, not patentable

13. 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 of the 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.

14.  3 d : Explanation
For the purposes of this clause,
 salts, esters, ethers, polymorphs, metabolites,
pure form, particle size, isomers, mixture of isomers,
complexes, combinations, and other derivatives of known
substances shall be considered to be the same substance,
unless they differ significantly in properties with regard to
efficacy.
 eg. New use of Aspirin in heart ailments,
 Mere new uses of Neem

15. e) A substance obtained by mere admixture resulting only
in the aggregation of the properties of the components
thereof or a process for producing such substance
For example: Not patentable-
1) Paracetamol (Antipyretic) +Brufen (analgesic)
+ =
= A drug (antipyretic & analgesic)

16. 2) A mixture of sugar and some colorants in water
toproduce a soft drink is mere admixture
But, a mixture resulting into synergistic properties of
mixture of ingredients however, may be patentable
e.g Soap, Detergents,lubricantsssss etc

17. f) The mere arrangement or rearrangement
or duplication of known devices each
functioning independently of one another
in a known way,
eg. Workshop improvement, combination of known integers
Timer +( watch +TV+ street light)= No Patent
g) Ommited in 2002 (a method or process of testing applicable during the
process of manufacture )
h) A method of agriculture or horticulture;

18. i) Any process for medicinal, surgical, curative,
prophylactic, diagnostic, therapeutic or other treatment of
human beings or a similar treatment of animals to
render them free of disease or to increase their economic
value or that of their products

19. For example:
o Removal of cancer tumor
o Removal of dental plaque and carries,
o Surgical processes, any process relating
to therapy,
o Method of vaccination,
o Method of therapy carried out on materials
temporarily removed from the body for example,
blood transfusion

20. However ,
 Method performed on tissues or fluids permanently
removed from the body
 Surgical,therapeutic or diagnostic Apparatus or instrument
are not excluded from patentability

21. j) Plants & animals in whole or any part
thereof other than micro- organisms, but
including seeds, varieties and species and
essentially biological process for
production or propagation of plants &
animals

22. For example,Clones and new varieties of plants: Not
patentable
Microorganisms, per se: Not patentable,
 If human intervention in the process plays a
significant role- not an essentially biological process
A process for the production of plants or animals if it
consists entirely of natural phenomena such as
crossing or selection”- essentially biological

23. k) A mathematical or business method or
computer programe per se or alogrithms;
, an algorithm is a type of effective method(related to mathematics,
computing, linguistics, and related disciplines) in which a definite list of
well-defined instructions for completing a task, when given an initial
state, will proceed through a well-defined series of successive states,
eventually terminating in an end-state

24.  A literary , dramatic , musical or artistic work or
any other aesthetic creation,
m) A mere scheme or rule or method of performing
mental act or method of playing game,
eg. Rules of cricket (20-20 rule), football etc.

25. n) Presentation of information
O) topography of integrated circuits,

26. p) An invention which, in effect, is the
Traditional Knowledge
or an aggregation or duplication of
known properties of traditionally known
component or components
 + =

27. SEC.4 – Invention relating to atomic energy can’t be
patented.
Invention relating to atomic has been described in
sec.20(1) of the Atomic Energy Act,1962.

28. Study Material-
 Intellectual Property Law (Lionel Bently and Brad
Sherman)-
Chapter 17,18,19-- Pg. 362-456
.Intellectual Property (David Brainbridge)
Pg.– 338-375

29. THANK u 2 ALL