What Constitutes an Invention

1Section 2(1)(j) defines an invention as a new product or process involving an inventive step and capable of industrial application. A 'new invention' refers to an 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 the complete specification. In other words, the subject matter has not fallen in public domain or that it does not form part of the state of the art. (Patents Act 1970, s 2(1)(l).)

2'Invention' includes both products and processes. In the case of a product patent, the article or apparatus itself, which is the end product, qualifies for a patent protection. In the case of process patent, the patent protection is limited to a particular process through which the end product is attained. (See Raj Prakash v Mangat Ram Choudhury AIR 1978 Del 1, (1977) Raj LR 440 (DB); Thomson Brandt v Controller of Patents AIR 1989 Del 249.) Section 5 introduced the process patent and product patent distinction in providing that no patent shall be granted in respect of claims for substances intended for use as food or as medicine or as drug, but claims for the methods or processes of manufacture of these substances shall be patentable. With the omission of s 5, such distinction is no relevance. (Section 5 was omitted by the Patents (Amendment) Act 2005 with retrospective effect from 1 January 2005.)

3The term invention means 'to find out something or discover something not found or discovered by any one before'. (Raj Prakash v Mangat Ram Choudhury AIR 1978 Del 1, (1977) Raj LR 440 (DB).) An invention is understood based on how the three of its subjective constituents, ie, novelty, inventive step, and industrial application are understood. The subject matter should involve an invention over what is old. (Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978).) Any thing that is in the knowledge of the public or is disclosed to the public cannot be regarded as an invention under the Act. An invention need not be a complicated advancement in technology. Even a simple invention, so long as it is novel or new, would be an invention. (Raj Prakash v Mangat Ram Choudhury AIR 1978 Del 1 (DB).) An improvement can also be an invention. In Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978) (para 18) the Supreme Court held, under the Indian Patents and Designs Act 1911, "The fundamental principle of Patent Law is that a patent is granted only for an invention which must be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of a patent that it must be the inventor's own discovery as opposed to mere verification of what was already known before the date of the patent."

4Any product or process could qualify for a patent if the following four requirements are met:

(1) The invention must be new (novelty); (2) The invention must involve an inventive step (inventive step or non-obviousness); (3) It should be capable of industrial or commercial application (industrial application or utility); (4) It should not come under the inventions which are not patentable mentioned in ss 3 and 4 of the Act (inventions not patentable).

Exclusions to the applied first

5The first three requirements, also known as positive requirements, are contained in s 2(1)(j) of the Act. It provides that the invention must be 'new', 'involve an inventive step' and 'capable of industrial application'. The fourth requirement is a negative requirement which is contained in ss 3 and 4. A patent will be granted for an invention only if it satisfies the first three requirements, and does not come under the fourth requirement. With regard to the order of inquiry, the requirements in ss 3 and 4 have to be applied first before determining whether the conditions for patentability in s 2(1)(j) are satisfied. In Cipla v F Hoffmann-La Roche (2015) (para 61) the Division Bench of the Delhi High Court held, "Section 3 of the Act lays down a threshold for patent eligibility and is not an exception to Section 2(1)(j)." The Court held that section 2(1)(j) provides a "theoretical definition of an invention while Section 3 illustratively outlines what are not inventions."