In this article, the author seeks to analyse the scope of the patentable subject matter under Indian law and the TRIPS agreement. The article explains in details the limitations or exclusions provided in Section 3 of the Patents Act, 1970 with the help of judicial decisions.
The Patents Act, 1970 grants patents to inventions that are novel, non-obvious and capable of industrial application. In addition to these statutory requirements, it is also essential that the patent application must fall within the category of the patentable subject matter. If the claim is regarding an invention belonging to the excluded category, then irrespective of the fact that they are novel, have an inventive step and are capable of industrial application, they will not be eligible for a patent.
However, before delving into the patentability of the subject matter, it is very important to understand the definitions of certain terms which are crucial to determine whether it be patent-eligible. Some of the important definitions under the Act are :
- Section 2 (1)(j) of the Act defines an invention as a new product or process involving an inventive step and capable of industrial application.
- Section 2 (1) (ja) of the Act defines an inventive step 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.
- Section 2 (1) (ac) of the Act defines capable of industrial application in relation to an invention to mean that it is capable of being made and used in any industry.
- Section 2 (1) (l) defines a new invention as 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 of a patent application with complete specification, i.e., the subject matter has not fallen in the public domain or that it does not form part of the state of the art.
II. Patentable Subject Matter
In addition to the three statutory requirements of patentability, what is essential is that a claim for a patent must fall within the category of inventions that are patentable. Different countries adopt criteria to determine the patentable subject matter. For instance, under US law, an invention is patent-eligible if it satisfies the requirement of a patentable invention as provided under 35 USC S. 101.
Thus, it clearly lays down what exactly is patentable. In contrast to this, the EPC and the Indian Patents Act do not expressly state which all inventions are patent-eligible but rather define patent eligibility in the negative sense. It means that instead of stating what is patent-eligible, they lay down the category of inventions that are not patent-eligible under Article 52 of the EPC and Section 3 of the Act respectively. The Act contains a non-exhaustive list of abstract or technical things which shall not be regarded as inventions for the purpose of granting patents.
III. Provision under TRIPS
It is Article 27 of the TRIPS Agreement which enumerates the scope of the patentable subject matter. While Article 27.1 enunciates that patents shall be available for any inventions, whether products or processes, in all fields of technology if they are new, involve an inventive step and are capable of industrial application, Articles 27.2 and 27.3 enumerate the restrictions which can be placed on the patentability. Article 27.2 gives power to the member state to exclude certain inventions from patentability if such a measure is essential to protect public order or morality. Whereas Article 27.3 lays down two categories of inventions the members may exclude from patentability.
IV. Non-Patentable Inventions in the Patents Act, 1970
Section 3 of the Act under Clauses (a) to (p) contains the list of non-patentable inventions:
Frivolous Inventions and inventions contrary to natural laws: Section 3 (a)
An invention that lacks utility and has no purpose or use is called a frivolous invention. For instance, in the case of Indian Vacuum Brake Co. Ltd v E.S Luard , it was held that a patent for making in one-piece articles which were earlier prepared in two or more pieces could not be considered a valid patent and was frivolous.
Inventions Contrary to Public Order or Morality: Section 3 (b)
As provided in Article 27.2 of the TRIPS Agreement, each country can determine its own notion of ordre public depending upon its social and cultural values and inventions which are contrary to public order or morality are not granted patent protection. It is to be noted that developments in technology have certain risks associated with it. For instance, patents for genomes can raise legal, ethical and moral issues especially in the context of human genomes.
One of the most important cases wherein implications of public order and morality were considered is the landmark Harvard Onco-Mouse case  wherein a patent was filed in the EPO for a ‘method for producing transgenic animals.’ The patent was granted in respect of non-human mammalian animals. The genetic manipulation of animals was problematic as the reinsertion of activated oncogene made the animal abnormally sensitive to carcinogenic substances and stimuli, and consequently prone to huge suffering.
There was widespread opposition against the grant of the patent. In this case, it was held that inventions in connection with new technology have to be weighed with the risks on one hand and the positive aspects on the other in order to ascertain whether they satisfy the requirement of the EPC. The EPO adopted a utilitarian approach balancing the pain inflicted on the mice, on one hand, and the beneficial effect on humans on the other hand. On appeal, the patent was maintained by limiting its application to “transgenic mice”.
Discoveries of scientific principles and natural phenomenon: Section 3(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 has been excluded from patentability under the Act. They are excluded because allowing a patent for mere discovery would amount to monopolizing every application subsequently found for that discovery during the duration of the patent. This would have the effect of deterring further research, inhibit competition and deprive the public of a knowledge that had always, existed, only waiting to be uncovered.
It is very important that a proper distinction must be made between a discovery and an invention. Whereas both of them add to human knowledge, the former only lifts a veil and discloses something which had been unseen while the latter necessarily involves the suggestion of an act to done and this act results in a new product, or a new result or process. The US supreme court distinguished both of them in the landmark case of Funk Bros. Seed Co. v Kalo Inoculant Co.
Discovery of a new property to a known substance: 3(d)
To comply with the TRIPS agreement, India amended the Patents Act in 2005, allowing new chemical entities to be patented. The amendment also sought to prevent evergreening by making small modifications to a chemical entity, thus extending the patented life of the drug. Section 3(d) of the provides:
“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, is not patentable. “
One of the most important cases in this regard is the SC decision in Novartis Ag v. UOI, wherein the appellant challenged the amendment since the patent was rejected for a beta crystalline form of Glivec on the ground that it failed to satisfy the requirements under S. 3(d) of the Act. The SC found that the drug Glivec emanated directly from an earlier Zimmermann patent and comes to the market for commercial sale and was hence ineligible under S. 3(d). The court held that there was no “enhancement of efficiency” found in the present case.
Admixture of Substances: Section 3(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 is not patent-eligible under Section 3(e) of the Act. If the result achieved by the invention is more than what might be expected from a mere mixture, the invention is patentable. To overcome the S. 3(e) barrier, a patentee is required to prove that the combination of the known substances has resulted in a synergism wherein the combination displays properties that are not displayed individually by each component.
Arrangement of known devices: Section 3(f)
The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way is not patentable under S. 3(f) of the Act.
Method of agriculture or horticulture: Section 3(h)
A historical perspective shows that the Indian policy is based on the concept that plant varieties and seeds are the common heritage of mankind. The main objective behind excluding methods of agriculture from protection is to ensure that India is self-sufficient in food production. A large section of our society depends upon agriculture for its livelihood. Patents are excluded so as to alleviate poverty and to ensure that there would be self-sufficiency in India’s food sector.
Methods of Treatment: Section 3(i)
Any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or any 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 products is excluded from patentability under S. 3(i) of the Act. This provision is in conformity with Article 27 (3) (a) of the TRIPS agreement.
Plants and animals in whole: Section 3(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 are excluded from patentability under Section 3(j) of the Act. Article 27 (3)(b) of the TRIPS agreement enunciates this same principle. Plant variety protection laws have been developed in almost all countries providing sui generis protection for agricultural and horticultural innovation. The Protection of Plant Varieties and Farmer’s Rights Act, 2001 allows protection of new and distinct varieties of plants that satisfy the requirements of the Act.
With respect to the patentability of micro-organisms, Diamond v Chakrabarty  and Harvard- Onco-Mouse cases are landmark decisions. While looking at the Indian position, the decision of the Calcutta HC in the case of Dimminac AG v. Controller of Patents is very important. In this case, the patent application was for a process that resulted in the manufacture of a live vaccine that was useful as a cure for infectious bursitis in poultry which was rejected by the patent office. The HC set aside this decision and held that the Act did not prohibit patenting of biotechnological inventions and ordered the patent office to reconsider the application following which the patent was granted.
Mathematical or Business method: Section 3(k)
This provision of the Act is crucial with regards to the patentability of Computer-related inventions. Section 3(k) prohibits patents for a mathematical or business method or a computer programme per se or algorithms. A mathematical algorithm is a procedure for solving a given mathematical problem. There is a long list of cases wherein the courts have discussed the patentability of computer software-related inventions.
With regards to CRIs, the US adopts a more liberal approach compared to India and the EU. Both in India and the EU, business methods are not patentable whereas in Bilsky v Kappos, the US SC granted a patent for a business method. In India, neither algorithms nor computer programs per se are patentable. It is only when there is a technical contribution made by a software and when it is in conjunction with the hardware that a patent can be granted for a CRI.
Literary, dramatic, musical or artistic work: Section 3(l)
Section 3(l) of the Act provides that literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions are not eligible for patent protection. Its because they come under the scope of copyright protection. In these cases, the protection is sought for the original expression of an idea and not the idea in itself.
A mere scheme, method of performing a mental act: Section 3(m)
Section 3(m) of the Act provides that a mere scheme or rule or method of performing a mental act or method of playing a game is not eligible for a patent. One of the best-known examples in this area is the decision in Cooper’s Application, in which Sir Robert Finley said:
“You cannot have a patent for a mere scheme or plan- a plan for becoming rich; a plan for a better government of a state; a plan for the efficient conduct of business.”
Presentation of information: Section 3(n)
An invention in order to receive patent protection must have a technical result. Section 3(n) of the Act provides that a presentation of information is not patent-eligible. The mere presentation of information can be considered as an original expression of an idea which comes within the ambit of copyright protection.
The Topography of Integrated Circuits: Section 3(o)
ICs are protected by the Semiconductor Integrated Circuits Layout-Design Act, 2000 and are not a patentable subject matter.
Traditional knowledge: Section 3(p)
Section 3(p) of the Act provides that an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of a traditionally known component or components is not patent-eligible.
In the case of Dhanpat Seth v Nil Kamal Plastic Crates Ltd, the Himachal Pradesh HC had to consider whether a patent granted in respect of an invention which was the modified version of traditional Kilta was justified. The question which arose was whether the change of material from bamboo to plastic and the development of adjustable nylon straps with a buckle is an inventive step within the meaning of the Act. The court answered this question negatively and held that there was nothing new or inventive about it.
Inventions relating to Atomic Energy
Section 4 of the Patents Act provides that no patent shall be granted in respect of an invention relating to atomic energy falling within the subsection (1) of section 20 of the Atomic Energy Act, 1962. S. 20 of the Atomic Energy Act makes special provisions relating to inventions that are useful or relate to atomic energy. The controller of patents will have to refer the application to the Central government on whether it is relating to atomic energy or not and the decision of the government is final notwithstanding anything contained in the Patents Act, 1970.
Thus, the Indian Patent law clearly lays down the limits within which inventions can be patented under Sections 3 and 4 of the Act. The Act defines patent eligibility in the negative by laying down what all are not patentable. It does not say which inventions are patentable but the law is quite clear on the matter and with judicial precedents, whatever ambiguity that existed has been judiciously addressed.
 Hereafter referred to as “the Act”.
 Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
 AIR 1926 Cal 152
 1991 EPOR 525
 92 L Ed 588: 333 US 127 (1948).
 (2013) 6 SCC 1
 447 U.S. 303 (1980)
 Supra note 6
 (2002) 1 PLR 255
 561 US (2010)
 (1902) 19 RPC 53
 (2008) 36 PTC 123 (HP)