Patentability of an Invention

Patent Eligibility 

Patentability of an invention refers to patent eligibility of the invention, as defined in the patent laws. When a patent application is examined by the patent office, the primary goal of the patent examiner is to determine the patentability of the invention as defined by the patent claims, as described in detail by the patent description, and as illustrated by way of patent drawings. The intention is to ensure that the technology covered by the patent application is new and the subject matter of the patent description and patents claims was not disclosed in public domain before the date of filing of patent application, or before the first priority date of the patent application.

“Invention” under Indian Patents Act, 1970

In accordance with the Indian Patents Act, 1970, definition of invention and inventive step include:

Section 2(1) (j) “invention” means a new product or process involving an inventive step and capable of industrial application;

Section 2(1) (ja) “inventive step” means 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;

In essence, the inventive step of the technology to be patented should illustrate technical advancement or economic significance in the subject matter of the patent application as compared to the existing knowledge which is already known to a person skilled in the similar domain.

Determination of Inventive Steps of an Invention

Indian Courts have provided certain insights regarding how to determine inventive step of an invention claimed in patent claims of a patent application.

In Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries Ltd, it was held by the Indian Supreme court that “The expression” does not involve any “inventive step” and its equivalent word “obvious”, have acquired special significance in the terminology of Patent Law. The ‘obviousness’ has to be strictly and objectively judged. For this determination, several forms of the question have been suggested.

“Was it for Practical Purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned?”

To determine Invention Step, the following points should be taken into consideration:

(a) Identify the “person skilled in the art”, i.e. a competent craftsman in same domain or engineer as distinguished from a mere artisan

(b) Identify the relevant common general knowledge of that person at the priority date of filing the patent application;

(c) Identify the inventive concept of the patent claim in question;

(d) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” of the technology and the inventive concept of the patent claims.

Novelty in an Invention

Novelty is an extremely essential requirement and an undisputed state of patentability. An invention will be patentable if it is novel or new in the light of prior art, or is not anticipated by prior art.

Industrial Application of an Invention

The invention as claimed in patent specification should meet the criteria that the invention can be made or used in some kind of industry. The word “Industry” broadly refers to having any useful and practical activity while excluding intellectual or aesthetic activity.

Under Section 2(1)(ac) of Indian Patents Act, “capable of industrial application”, in relation to an invention, means that the invention is capable of being made or used in an industry.

However, patent claims relating to “Method of playing games” and “computer programming languages” are not considered to be industrially applicable. The detailed description of the patent specification must disclose a practical application and industrial use for the claimed invention wherein a concrete benefit must be derivable directly from the description coupled with common general knowledge.

Therefore, while drafting patent application, writing the advantages of the invention in the last few paragraphs will be helpful to illustrate the industrial applicability of the invention.

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