COURSE IPR:

INTRODUCTION TO
PATENTS

SAYA CHOUDHARY KAPUR

PARTNER
SINGH AND SINGH LAW FIRM
GENESIS OF PATENT

 Non-disclosure – hampered development and innovation

 Quid Pro Quo – Disclosure of claimed invention
 Incentive – time bound monopoly
 Granted by royal decree/court
 Statutory right - Patents Act, 1970
 TRIPS compliant
OBJECT OF PATENT LAW
 This question was answered by the Hon’ble Supreme Court in Bishwanath Prasad Radhey
Shyam v. Hindustan Metal Industries [(1979) 2 SCC 511] as under:
“……….17. The object of Patent Law is to encourage scientific research, new technology and industrial
progress. Grant of exclusive privilege to own, use or sell the method or the product patented for a
limited period, stimulates new inventions of commercial utility. The price of the grant of the monopoly is
the disclosure of the invention at the Patent Office, which, after the expiry of the fixed period of the
monopoly, passes into the public domain.
……………..”
 Thus, a patent grants an exclusive  to the owner against the world at large, which incentivizes
innovation and promotes scientific temperament. 
PATENTS ACT, 1970: WHAT IS A PATENT?

► Section 2(1)(m) of the Indian Patents Act, 1970 states that:

“patent” means a “patent for any invention granted under this Act”
PATENTS ACT, 1970: WHAT IS A PATENT?

► Section 2(1)(j) defines “invention” as:

“a new product or process involving an inventive step

and capable of industrial application”
 REQUIREMENTS FOR GRANT OF A
PATENT: Novelty
► Section 2(1)(l) defines “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 patent application with complete specification, i.e., the
subject matter has not fallen in public domain or that it does not form part of
the state of the art”.

Any invention, the subject matter of which is part of the public domain/state
of the art, is deemed to be ANTICIPATED
REQUIREMENTS FOR GRANT OF A
PATENT: Novelty (Contd.)
► Chapter VI – “Anticipation” (Section 29-34) describes exceptions to anticipation,
which are as follows:
► Section 29 - if the invention has been published before 1.1.1912, or the matter
published is obtained from the inventor, or is in violation of the rights of the inventor.
► Section 30 – if the invention was disclosed to the Government or its agencies for the
purposes of investigation or for testing its merits.
► Section 31 – Display and consequent publication and use of the invention with the
consent of inventor, or if the inventor itself describes it in a paper. In such a case,
however, the inventor has to file the patent application within 12 months of the
disclosure of the inventor to claim monopoly.
► Section 32 – If invention was publicly worked for the purposes of reasonable trial
► Section 33 – if a provisional specification of the same invention is filed before the
patent office
► Section 34 – If use or publication is due to any of the above factors, the Controller shall
not refuse to grant the pater or revoke it.
 TEST: Novelty
► Person skilled in the art
► Full disclosure must be there in prior art
► Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius v.
Unichem Laboratories, AIR 1969 Bombay 255:
"to anticipate a patent, a prior publication or activity must contain
the whole of the invention impugned; i.e., all the features by which
the particular claim attacked is limited.”
► Enablement must be shown
 TEST: Novelty
► Mosaicing of prior art documents is not allowed
► Exception – referencing
► SINGLE OR RELATED DOCUMENTS
► In Lallubhai Chakubhai Jariwala vs. Chimanlal Chunilal and Co. AIR 1936
Bom 99, the Bombay High Court stressed on the importance of novelty in the
following manner:
“"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….”
 REQUIREMENTS FOR GRANT OF A
PATENT: Inventive Step
 Section 2(1)(ja) defines “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".

 Test of inventive step:

 OBVIOUSNESS – looked at from perspective of a person skilled in the art
 PSIA can be an individual or a group of individuals.
 One field or different fields – subject matter of patent
PERSON SKILLED IN THE ART
 For determination of inventive step in a patent, it is adjudicated from the
perspective of a person skilled in the art, and whether such a person having
common general knowledge would be able to arrive at the invention.
 Who is Person Skilled in the Art?
 It has not been defined in the Act. Reference can be made to Section 64(1)(h) to
determine if a person is PSIA.
 In F. Hoffman La Roche v. Cipla, the Division Bench of the Delhi High Court, held as
under:
“The features of a person skilled in the art are that of a person who practices in the field of
endeavor, belongs to same industry as the invention, possesses average knowledge and ability
and is aware of what was common general knowledge at the relevant date.”
 REQUIREMENTS FOR GRANT OF A
PATENT: Inventive Step
• In F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (225(2015)DLT391), a Division Bench of the Delhi
High Court laid down the following test to ascertain whether an invention has an inventive step or
not:
• To identify the inventive step embodied and claimed in the patent
• To identify the "person skilled in the art", i.e. competent craftsman or engineer as
distinguished from a mere artisan;
• To identify the relevant common general knowledge of that skilled person at the priority date;
• To identify the differences, if any, between the matter cited in the alleged invention as forming
part of "state of the art" and the inventive concept of the claim or the claim as construed in the
patent;
• To decide whether those differences constituted steps which would have been obvious to the
ordinary person skilled in the art and rule out a hindsight approach.
 OBVIOUSNESS
Recently, the Delhi High Court in Bristol-Myers Squibb Holdings vs BDR Pharmaceuticals [CS(COMM) 27/2020 decided on 30.01.2020]
summarized some of the principles to determine whether an invention is obvious or not as under:-
(i) A hindsight reconstruction by using the patent in question as a guide through the maze of prior art references in the right way so as to achieve
the result of the claim in the suit, is required to be avoided.
(ii) The patent challenger must demonstrate the selection of a lead compound based on its promising useful properties and not a hindsight driven
search for structurally similar compounds.
(iii) There should be no teachings away from the patent in question in the prior art.
(iv) Mere structural similarity cannot form the basis of selection of lead compound in a prior art and the structural similarity in the prior art
document must give reason or motivation to make the claim composition.
(v) Though mosaic of prior art documents may be done in order to claim obviousness, however, in doing so, the party claiming obviousness must
be able to demonstrate not only the prior art exists but how the person of ordinary skill in the art would have been led to combine the relevant
components from the mosaic of prior art.
(vi) It has to be borne in mind, small changes in structures can have unpredictable pharmacological effects and thus, structural similarity alone is
not sufficient to motivate to selection of the lead compound.
(vii) Though it would be tempting to put together a combination of prior arts but this requires a significant degree of hindsight, both in selection of
relevant disclosures from these documents and also in disregarding the irrelevant or unhelpful teachings in them.
REQUIREMENTS FOR GRANT OF A
PATENT: Industrial Applicability
• Section 2(1)(ac) states that “capable of industrial application” in relation to
an invention means that “the invention is capable of being made or used in an
industry”.
• Issue:
o Whether industrial applicability of an invention is determined on the basis
of capability of industrial application or actual industrial application?
o Only capability of industrial application is needed and not actual
application
o In F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (225(2015)DLT391), it was
stated that commercial success is not necessary to establish patent utility.
PATENTABILITY
 While discussing the scheme of the Act, the Supreme Court in Bishwanath Prasad Radhey
Shyam v. Hindustan Metal Industries, laid down the following principles:
 A patent is granted for an invention which is new and useful, having an inventive step
 It must be the outcome of the inventor’s own application of mind, rather than a verification or
outcome or natural suggestion of what was known before the patent was published
 To be patentable, even an improvement on something known must be more than a workshop
improvement, and must independently satisfy the triple test of patentability
 An invention would have an inventive step if the combination of old known integers may be so
combined that by their working inter relation they produce a new process or improved result.
Mere collocation of more than one integers or things, not involving the exercise of any
inventive faculty would not according to the Court qualify for the grant of a patent.
PATENTABILITY
 Recently,the Madras High Court in K.Manivannan vs The Chairman, IPAB Chennai & Ors.
 2017 (72) PTC 152 (Mad)
 Basic Patent Law is that a Patent is granted only in respect of an 'Invention' which must be new and
useful one. It ought to have 'Novelty' and 'Utility‘.
 The Court specified the features of a Patent as follows:
(a) The patent must be in respect of an invention and not a discovery.
(b) In respect of one single invention there must be one single patent.
(c)A patent may be in respect of a substance or in respect of a process.
(d)But it is not possible to bifurcate a patent and state that one relates to the substance and the other
to the process.
(e) In order to have a complete patent, the specifications and the claims must be clearly and
distinctly mentioned.
(f)It is the claims, and claims alone which constitute the patent.
 A mere juxtaposition of known devices in which each device functions independently is not a
patentable invention.
REQUIREMENTS FOR GRANT OF A
PATENT: Patentable subject matter
• Chapter II deals with “Inventions not
Patentable”.
o Section3 lists what are not inventions within the
meaning of the Act.
o Section 4 states that inventions relating to atomic
energy under Section 20(1) of the Atomic Energy
Act, 1962 are not patentable.
SECTION 2 READ WITH SECTION 3
and 4
 As stated above, an invention is patentable when it satisfies the triple test of novelty,
inventive step, and industrial applicability.
 However, if the subject matter of an invention falls within the ambit of Sections 3 and
4 then, at the outset, the invention is not patentable, regardless of whether it is novel,
inventive or has utility.
 In fact, the Delhi High Court in F. Hoffman La Roche v. Cipla held that for subject
matter that falls outside the scope of Section 3, a qualitative analysis needs to be
employed to ascertain whether it satisfies the conditions of Section 2(1)(j), while for
subject matter that falls within the scope of Section 3, an analysis under Section 2(1)(j)
need not be employed as it will be rejected at the threshold.
SECTION 3 – WHAT ARE NOT INVENTIONS
3. What are not inventions

The following are not inventions within the meaning of this Act –
 (a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
 (b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or
which causes serious prejudice to human, animal or plant life or health or to the environment;
 (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;
 (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;
 (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;
 (f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a
known way;
SECTION 3 – WHAT ARE NOT INVENTIONS (contd.)
 (h) a method of agriculture or horticulture;
 (i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or 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;
 (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;
 (k) a mathematical or business method or a computer programme per se or algorithms;
 (l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and
television productions;
 (m) a mere scheme or rule or method of performing mental act or method of playing game;
 (n) a presentation of information;
 (o) topography of integrated circuits;
 (p) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of
traditionally known component or components.
SECTION 3 – WHAT ARE NOT INVENTIONS (contd.)
 Currently in limelight
 Section 3(d) and section 3(k)
 Novartis Supreme Court Case
 Incremental innovation permissible
 Efficacy – therapeutic efficacy
 CRI guidelines – novel hardware
 Technical effect
 Facts and circumstances
Evergreening
 Evergreen trees – evergreen patents
 “Evergreening is a term used to label practices that have developed in
certain jurisdictions wherein a trifling change is made to an existing
product, and claimed as a new invention. The coverage/protection afforded
by the alleged new invention is then used to extend the patentee’s exclusive
rights over the product, preventing competition.” – Novartis AG v Union
of India
Evergreening

 Glivec in South Africa:

 Patents upto 2022; 10 patents granted for Imatinib and its ‘variants’
 Price: Rs. 1890 per tab = Rs. 56,700 p/m = Rs. 6,80,400 pa
 Glivec in USA:
 Imatinib patent expired in 2015; Beta Crystalline form of Imatinib Mesylate:
2019
 Price: Rs. 8099 per tab = Rs. 2,42,982 p/m = Rs. 29,15,795 pa
 Glivec in India:
 No patent
 Price: Rs. 80-90 per tab =Rs. 2400 p/m = Rs. 2,88,000 pa
Novartis AG v Union of India

 Imatinib (free base) Imatinib Mesylate (methanesulfonic

acid addition salt) beta crystalline form of Imatinib Mesylate

 Application claimed Imatinib Mesylate in beta crystalline form

(Glivec)
Novartis AG v Union of India

“103. We are clearly of the view that the importance of the amendment made in section 3(d),
that is, the addition of the opening words in the substantive provision and the insertion of
explanation to the substantive provision, cannot be under-estimated. It is seen above that, in
course of the Parliamentary debates, the amendment in section 3(d) was the only provision
cited by the Government to allay the fears of the Opposition members concerning the abuses
to which a product patent in medicines may be vulnerable. substances, and more
particularly pharmaceutical products. We have, therefore, no doubt that the
amendment/addition made in section 3(d) is meant especially to deal with chemical The
amended portion of section 3(d) clearly sets up a second tier of qualifying
standards for chemical substances/pharmaceutical products in order to leave the
door open for true and genuine inventions but, at the same time, to check any
attempt at repetitive patenting or extension of the patent term on spurious
grounds.”
Novartis AG v Union of India

104. We have so far seen section 3(d) as representing “patentability”, a

concept distinct and separate from “invention”. But if clause (d) is isolated
from the rest of section 3, and the legislative history behind the incorporation
of Chapter II in the Patents act, 1970, is disregarded, then it is possible to
see section 3(d) as an extension of the definition of “invention” and to
link section 3(d) with clauses (j) and (ja) of section 2(1). In that case,
on reading clauses (j) and (ja) of section 2(1) with section 3(d) it
would appear that the Act sets different standards for qualifying as
“inventions” things belonging to different classes, and for medicines
and drugs and other chemical substances, the Act sets the invention
threshold further higher, by virtue of the amendments made in section
3(d) in the year 2005.…”
Novartis AG v Union of India
 Efficacy = Therapeutic efficacy
“…
187. In whatever way therapeutic efficacy may be interpreted, this much is absolutely clear:
that the physico-chemical properties of beta crystalline form of Imatinib Mesylate, namely
(i) more beneficial flow properties, (ii) better thermodynamic stability, and (iii) lower
hygroscopicity, may be otherwise beneficial but these properties cannot even be taken
into account for the purpose of the test of section 3(d) of the Act, since these
properties have nothing to do with therapeutic efficacy. …”
Interpretation of Section 3(d) of the Indian Patents Act
(Contd.)

 F. Hoffman la Roche Ltd and Anr. v. Cipla  (225 (2015)DLT391)

 Section 3 of the Act lays down a threshold for patent eligibility and is not an exception to Section 2(1)(j)
 Structurally similar derivatives of a known ‘substance’ will also be functionally similar and hence ought not
to be patentable.
 A new chemical entity (NCE) that is structurally dissimilar but functionally similar to an existing chemical
entity is thus merely a substance under section 3(d).
 If the substance has an added layer of enhanced efficacy, then it will be treated as a ‘new product’ and
would be eligible for assessment under Section 2(1) (j) to ascertain whether its formation involved an
inventive step. If the new product involved one or more inventive step, then it will qualify as a
pharmaceutical substance.
 Interpretation of Section 3(d) of
the Indian Patents Act (Contd.)
• Gilead granted patent for Sofosbuvir (vide order dated 9th May 2016) :
o Claimed compounds are not polymorphs, isomers, salts, etc. of a known compound.
o Compounds argued to be known substance were hypothetical in nature.
o Applicant referred to the comparative efficacy data and toxicity data to show that the claimed
compound has a unique & novel substitution pattern, and they have both high potency and low
toxicity as compared to compounds existing on the priority date
o An Applicant for patent cannot be required to make a compound which was not in existence as on
the priority for showing comparative activities.
o The test of efficacy would depend upon the function, ability of the purpose of the product under
consideration.
o In the case of a medicine that claims to cure disease, test of efficacy can only be “therapeutic
efficacy”.
o If the substance has an added layer of enhanced efficacy, it will be treated as a ‘new product’.
Claimed compounds were held to be outside the prohibition of Section 3(d).
Interpretation of Section 3(d) of the Indian Patents
Act (Contd.)
Asian Electronics Ltd. vs Havells India Limited 2010 (44) PTC 66 (Del)
 Asian Electronics being owner of patent for "Conversion Kit to change the fluorescent
lighting units inductive operation to electronic operation" filed a suit for permanent
injunction and damages for infringement against Havells Limited alleging that the latter is
using all the novel and important features of their invention.
 The Court opined that the plaintiff's patent does not disclose any new product or any
significant improvement. It was held that the plaintiff's patent is mere a workshop
improvement over the US Patent;
 The Court was of prima facie view that the patent cannot sustain as being obvious, and is
also hit by the section 3(d) and 3(f ) of the Patents Act, 1970. It dismissed the application for
grant of injunction stating that patent is anticipated by prior art and the plaintiff has failed to
establish balance of convenience in his favor.
Interpretation of Section 3(h) of the
Patents Act
 Section 3(h) precludes patenting a process of agriculture or horticulture.
 This Section came up for interpretation before the Kerala High Court in Low Heat
Dryer v. Biju George 2010 (2) KHC 566, whereby the Court held that a device for
drying of agricultural produce was patentable. A distinction was made between a
device used in an agricultural and horticultural process and the process itself. The
Court held that the device itself was not a method of agriculture or horticulture,
even though it was used for the same.
Interpretation of Section 3(i) of the Patents
Act
 Section 3(i) states that any process for the medicinal, surgical, curative, diagnostic, therapeutic or other
treatment of human beings or process of similar treatment of animals, to render them free from disease is
not patentable.
 Important to note that section applies to Diagnostic PROCESSES and not PRODUCTS. Thus, an
instrument enabling diagnosis can still be registered as a patent.
 The Hon’ble Delhi High Court judgment in J. Mitra and Co. Pvt. Ltd. v. Kesar Medicaments and Anr.
(2008) 102 DRJ 106, which involved a patent for a diagnostic kit for detection of Hepatitis C Virus in the
human serum and plasma. The device was designed to ensure specificity and sensitivity in carrying out
tests making them viable for detection of HCV. While there was no objection raised under Section 3(i) of
the Act, the Court prima facie upheld the validity of the patent, being a product in aid of diagnosis.
 Even B. Braun Melsungen Ag v. Rishi Baid (2009) 110 DRJ 127, relating to safety I.V.
catheters/cannulae under the mark VSOFIX, no objection was raised in respect of the product under
Section 3(i). Injunction was denied, however, as there was a credible challenge to the patent.
Interpretation of Section 3(i) of the Patents
Act (Contd.)
 The above cases can be used as an illustration i.e., that if patented invention is a product
for diagnosis of any ailment, then Section 3(i) does not get attracted and the invention has
to merely satisfy the triple test of patentability.
 However, it can be argued that methods of detection which do not result in diagnosis of a
disease, can still be patented. As an illustration,
 Application No. 1974/MUMNP/2011 – IN 298524 related to an in vitro diagnostic process
for identification of a subject suffering from a primary non-infectious disease having an
increased risk of an adverse outcome potentially being induced by administration of an
antibiotic, by determining the level of Procalcitonin, which is a marker for bacterial
infection and sepsis, in their body. Here, by deleting the words “diagnostic”, the patent
was granted vide order dated 05.07.2018
Interpretation of Section 3(j) of the
Patents Act
Section 3(j) prohibits patenting of plants and animals, [other than microorganisms], including seeds,
varieties and species and essentially biological processes for production or propagation of plants and
animals.
The Section came up for consideration in the Monsanto Case before the Delhi High Court.
Monsanto sold 50 seeds of a Bt. Cotton transgenic variety (Donor Seeds) for 50 lakhs to
Nuziveedu and its subsidiaries under licensing agreements. Nuziveedu and its
subsidiaries used those Donor Seeds in their breeding program to inherit the Bt. cotton
trait to their proprietary cotton plant varieties.
According to Nuziveedu, the Bt. Cotton plant Varieties developed by it and its
subsidiaries have their own distinct characteristics, apart from the Bt. Trait and are
distinct from the Donor Seeds variety initially provided by Monsanto. Nuziveedu and
its subsidiaries stated that they have applied for IP protection for all their Bt. Cotton
Plant Varieties under the Protection of Plant Varieties and Farmers Rights Act, 2001.
Interpretation of Section 3(j) of the
Patents Act (Contd.)
 The Ld. Single Judge, had prima facie upheld the validity of Monsanto’s patents for its Bt. Cotton seeds. However, instead of
granting an injunction, the Indian Companies were allowed to use the Genetically modified cotton seeds by paying trait value
compensation to Monsanto.
 The Division Bench, setting aside the judgment of the Ld. Single Judge in Nuziveedu Seeds Ltd. And Ors. V. Monsanto
Technology Llc And Ors. (2018 SCC OnLine Del 8326) held as under:
 The subject patent falls within the exclusion spelt out by section 3 (j) of the Patents Act; the subject patent and the claims
covered by it were consequently held to be unpatentable.
 Monsanto’s suit, to the extent it seeks enforcement of the subject patent, was dismissed with liberty to proceed with respect to
the claim for damages and other reliefs, in the light of the sub-license termination notices issued.
 The Ld. single judge’s directions to Monsanto to continue with its obligations under the sub-license agreements, including
consequential orders with respect to payment and receipt of trait value, were upheld.
 Monsanto can apply for registration under the PV Act (within three months of this judgment); if it does so in terms of the
judgment, the benefit of its previous patent can be granted to it, for the purposes of the said Act, in respect of determination of
prior publication provisions and requirements.
 This judgment of the Division Bench was set aside by the Supreme Court, on the ground that the validity of the patent
is to be determined after evidence. Thus, the decision of the Ld. Single Judge was reinstated at the interim stage.
COMPUTER
RELATED
INVENTIONS
WHAT ARE COMPUTER RELATED
INVENTIONS?
“Computer Related Inventions (CRIs) comprises inventions
which involve the use of computers, computer networks or
other programmable apparatus and include such inventions
having one or more features of which are realized wholly or
partially by means of a computer programme or
programmes.” (Guidelines for Examination of Computer
Related Inventions)
 PATENT ACT PROVISIONS FOR CRI
 The Patents (Amendment) Act, 2002 introduced explicit exclusions from patentability
under section 3 for CRIs as under:

 S.3(k) – a mathematical or business method or a computer programme per se or

algorithms;

 S.3(m) – a mere scheme or rule or method of performing mental act or method of

playing game;

 S.3(n) – a presentation of information.

Interpretation of Section 3(k) of the
Patents Act
 Section 3(k) prohibits patenting of mathematical or business method or computer programme
per se, or algorithms.
 This sparked the debate whether software can be patented.
 Implementers’ argument – patents for software invalid, as they are computer programmes per se.
 Patentee’s argument – modern means of implementation ought not to become reason for non-
grant or revocation of patent.
 The intention for addition of the suffix “per se”, in Section 3(k) is evident from the Joint
Parliamentary Committee Report on the 2002 Amendment, which is as follows:
“In the new proposed clause (k), the words “per se” have been inserted. This change has been proposed
because sometimes the computer programme may include certain other things, ancillary thereto or
developed thereon. The intention here is not to reject them for grant of patents if they are inventions.
However, the computer programmes as such are not intended to be granted patent. This amendment has
been proposed to clarify the purpose”
Computer Related Inventions (CRI)
Guidelines
 To put a rest to the ensuing debate, the CGPDTM, first issued the Draft CRI (Computer Related
Inventions) Guidelines, 2013 for public comment. The Guidelines sought to explain “technical
advancement” appearing the Section 2(1)(ja) by introducing the term “technical effect”. However, the
final Guidelines were not released.
 CRI Guidelines, 2015 – Promulgated on 21.08.2015, provided for the following test for patenting
computer programme, in view of the per se caveat:
“a novel computer program with a known hardware which goes beyond the normal interaction with such hardware
and affects a change in the functionality and/or performance of the existing hardware… A computer program, when
running on or loaded into a computer, going beyond the ‘normal’ physical interactions between the software and the
hardware on which it is run, and capable of bringing further technical effect may not be considered as exclusion
under these provisions.”
 However, these guidelines met with a lot of resistance from the industry as being too liberal in favour of
software patents and in December, 2015 they were kept in abeyance.
Computer Related Inventions (CRI)
Guidelines (Contd.)
 CRI Guidelines, 2016 – To remedy the criticism for the 2015 Guidelines, the CGPDTM, issued the
2016 guidelines. It stipulated the following test of patentability under Section 3(k):
 Properly construe the claim and identify actual contribution
 If contribution lies only in mathematical or business method or algorithm, then to deny the claim
 If contribution lies in computer programme, then:
 To check if claimed in conjunction with a novel hardware
 If contribution lay solely in the computer programme and not the novel hardware, the claim was to be denied
 If contribution lay in both the computer programme and the novel hardware, then to proceed to test of
patentability of the invention
 This set of guidelines also faced criticism from the industry for being too stringent against the
patentee who had to always claim a computer programme in conjunction with a novel hardware.
Computer Related Inventions (CRI)
Guidelines (Contd.)
 CRI Guidelines, 2017 – The latest revised Guidelines of 2017 did away with the ”novel hardware”
requirement. The focus shifted to substance of the invention as opposed to the form it took. The
said guidelines stipulate as under:
“The sub-section 3(k) excludes mathematical methods or business methods or computer programme per se or
algorithms from patentability. Computer programmes are often claimed in the form of algorithms as method
claims or system claims with some ‘means’ indicating the functions of flow charts or process steps. It is well-
established that, while establishing patentability, the focus should be on the underlying substance of the
invention and not on the particular form in which it is claimed. What is important is to judge the substance of
claims taking the whole of the claim together. If any claim in any form such as method/process,
apparatus/system/device, computer program product/computer readable medium falls under the said
excluded categories, such a claim would not be patentable. However, if in substance, the claim, taken as
whole, does not fall in any of the excluded categories, the patent should not be denied.”
Telefonaktiebolaget LM Ericsson (Publ) vs. Intex Technologies
(India) Limited, 2015(62)PTC 90(Del)
• Interpretation of section 3(k) arose;
• What is meant by ‘computer program per se’;
• Delhi High Court conducted a detailed analysis of the position of the law in the European Union,
the United Kingdom and the United States;
• Test adopted in the Delhi High Court – technical effect;
• Rejected the ‘novel hardware’ approach;
• Use of ‘modern technical means in the form of a computer program’ would not attract section 3;
• Use of GPP for implementation of an invention would not attract section 3;
Interpretation of Section 3(k) by the
Courts
 In Ericsson v. Intex Technologies Ltd. [C.S. 1045/2014 on 13.05.2015], the DHC
held that inventions making “technical contribution or has a technical effect and
is not merely a computer programme per se” is patentable.
 Recently in Ferid Allani v. Union of India [W.P.(C) 7/2014 decided on 12.12.2019
by DHC on section 3(k) – held that the words “per se” were included in the
section to ensure that genuine inventions, based on computer programs, are not
rejected. The test of ‘technical contribution’ and ‘technical effect’ was upheld.
SECTION 48 – RIGHTS OF PATENTEES

 48. Rights of patentees.— Sub

 ctto the other provisions contained in this Act and the conditions specified in
section 47, a patent granted under this Act shall confer upon the patentee-
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(a)where the subject matter of the invention is a product, the exclusive right to prevent
third parties (who do not have his consent), from the acts of making, using, selling,
offering for sale or importing the patented product.

(b)where the subject matter of the invention is a process, the exclusive right to prevent
third parties (who do not have his consent), from the acts of using that process and from
using, selling, offering for sale or importing the product obtained directly by the patented
process. 
PATENT RIGHTS
 Initially, they were positive rights
 Limited to processes
 Medicinal and pharmaceutical products were excluded
 Time period was less than 20 years
 Post TRIPS, product patents granted
 20 years term of patent
 No patent term extension in India at present
 Section 48 accords a negative right
 Implication – working of the patent
 Challenges to a Patent Application/ Patent

Stage of challenging/ Pre-grant: Section 25(1) Post-grant: Section 25(2) Revocation: Section 64
Ground for challenge

Lack of Novelty 25(1)(b),(c), (d) and (k) 25(2)(b),(c), (d) and (k) 64(1) (a),(e),(q)

Lack of Inventive step 25(1)(e) 25(2)(e) 64(1)(f)

Subject of claim is not an 25(1)(f) 25(2)(f) 64(1)(d),(k)

invention/not patentable 
DEFENCES AND EXCEPTIONS
• Government use (Section 47)
• Experiment or Research(Section 47(3))
• S.107 – Grounds of revocation under Section 64 are available as ground for defence
• Bolar provision: Section107 A(a)
• Parallel Import/Patent Exhaustion: Section 107-A(b)
• Two views: limitations on exhaustion
THANK YOU!