The patenting of selection inventions is not plain sailing in India. The patentability of such inventions must be determined in accordance with the general provisions of the Indian Patents Act, as there is no separate provision for the same in the Act. Of the said general provisions, the assessment of inventive step and testing under section 3(d) of the Indian Patents Act can be perceived as the most critical to patentability of selected novel species.
Additionally, the concepts of ‘implicit disclosure’ and the contrasting views on ‘coverage vs disclosure’ frequently makes it challenging for applicants to defend their novel selection under the Indian scenario. Given the lack of enough precedents in India on this aspect, to date the fate of selection patents depends mostly on the judgement of the patent controllers. Not all hope is lost, however, since not only the Indian Patent Office, but also the IPAB and higher Courts have time-and-again acknowledged the existence of selection patents in India.
The standards for meeting patentability criteria under the Patents Act 1970 are emphasised to reward the contributors of an invention. Among these criteria, novelty is a vital and absolute condition for patentability. An invention is considered ‘novel’ if it is not in the public domain anywhere in the world, and is analysed using existing expertise in the relevant field of technology.
Novelty means the newness of the information that is generally unused or unknown and that gives its owner a competitive advantage in a business field.1 It is considered as the “sweet spot” to assess the patentability of an invention. Novelty criteria in case of publication of an invention actually mean new when compared to the prior art.
In order to prove that the patented invention consists of novelty it is utmost necessary to prove that it does not fall under the “state of the art“. The Indian Patent Act, however, does not define “state of the art” but as illustrated from various case laws state of the art means if the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated.
In simple layman terms, the invention should not be copied from anything earlier known to the public, it should be genuine which would give a clear idea about the invention. There should be no prior use of the invention or mere discovery of the known invention.
Sections 2(1)(l) and 2(1)(j) of the Patents Act highlight the difference between a new invention and an invention. A ‘new invention’ is defined 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 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”.
An ‘invention’ is defined as “a new product or process involving an inventive step and capable of industrial application”. One of the prerequisites for granting a patent for an invention is that the invention must be new or novel. Novelty should always be ascertained with reference to a single prior art reference and various documents cannot be combined; every element of the alleged claim should be disclosed in the prior art for novelty destroying.
Lack of novelty is usually referred to as ‘anticipation’ and is determined by factors such as prior publication, public knowledge and public use, commercialised products and selection inventions. While anticipation is not expressly defined in the Patent Act, Sections 29 to 34 identify what anticipation is not.
When testing for anticipation, if a prior art exists (ie, if the prior art describes something falling within the scope of an alleged claim) then, if by studying the prior art the claimed invention can be performed, the claim would be considered to be anticipated. It may be unnecessary to repeat the prior art test, but expert opinion may be considered in order to identify anticipation better using relevant expertise. It can also be identified by showing the predictable result as the outcome of what is described in the prior art, regardless of whether it would be a product or process falling within the scope of the claim.
In India, a patent application is considered to be anticipated if the invention is disclosed in a patent or any other document which is published before the priority date of the application. However, if the inventor proves that the matter published was obtained fraudulently and was published without his or her consent, then it may not be considered to be anticipated.
In Lallubhai Chakubhai Jariwala v Chimanlal Chunilal and Co the court observed that:
“The two features necessary to the validity of a patent are novelty and utility, but the real test is the novelty of the invention. Novelty is essential, for otherwise there would be no benefit given to the public and consequently no consideration moving from the patentee [while interpreting the factor related to public knowledge and public use.]”
In India, with the inclusion of a definition for new inventions, the test for anticipation now considers absolute novelty. The scope of the prior art has widened under the Patents Act because, apart from prior publication worldwide and prior use in India, even prior use outside India forms part of the prior art; and traditional ‘ancient’ knowledge in India also constitutes prior art. Interpretations are decided on a case-by-case basis and India is witnessing a substantial increase in patent enforcement activities. It will be interesting to see how cases will be determined at the IPO in view of the rapidly developing technological environment.
As stated in order for an invention to be patentable it should be necessary that the invention should not fall under prior art which should be known to the public and should not be anticipated, however, the Public user does not mean a user by the public but a user in a public manner. Therefore, it is imperative that the patent application should be filed ideally before disclosing it in the public domain. As Dr R.A. Mashelkar, India’s foremost scientist, rightly pointed out that ‘publish or perish’ or ‘patent, publish, and prosper’.