How to overcome the NON PATENTABILITY Section of Indian Patent law during Patent Prosecution in INDIA: How Innovative Internet is BOOSTING Investment
Patent Office Action Response Guide: SECTION 3 of Indian Patent Act, 1970 is the MYSTERY section of the Indian Patent law which relates to inventions that are tagged as “non-patentable”
According to Section 3 of following are not inventions within the meaning of Indian Patent Act, 1970 —
(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.
Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;
Defining efficacy with scientific data is the KEY to overcome the Section 3d
(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;
(g) Omitted by the Patents (Amendment) Act, 2002
(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.
Many a times the patent examiner cites provision of clause 3 (d), 3 (e) of Section 3 of the Indian Patent Act, 1970 to innovations related to biotechnology and pharmaceutical chemistry.
Under section 3, an innovation is non-patentable under the provision of clause 3 (d), 3 (e) for the following reasons:
The subject matter of patent claims are not patentable under section 3(d) of the Act as they claim the mere use or new use for a known substance it cannot be treated patentable invention as per the Act 1970.
Generally, the composition is already disclosed in a prior art document which discloses all the constituents of composition. So the present set of patent claims are just mere use or new use of known substance or composition which does not result in the enhancement of the known efficacy so it is tagged under section 3 (d) of Indian Patent Act, 1970.
OVERCOMING this PATENT SECTION OBJECTION
Combining one or more patent claims to make it new over the prior arts cited by the patent examiner.
Sufficiently pointing out difference in the case with respect to prior art patents and NPL cited.
The subject matter of patent claims fall within the scope of clause (e) of section 3 of the Patents Act 1970 (amended by The Patents Act 2005), if it relates to components of composition already known and disclosed in prior arts documents and the composition claimed in patent claims is obtained by mere admixture of already known compounds.
SUFFICIENCY OF PATENT DISCLOSURE:
SECTION 10 of Indian Patent Act, 1970, talks about the contents of the specification (detailed description) of patent application and many a times the patent examiner cites provision of Section 10 of the Indian Patent Act, 1970.
According to Section 10(1) of the patent law
Every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject-matter to which the invention relates.
Hence, If the title of the invention doesn’t clearly and sufficiently describe the invention or the subject matter of invention it attracts section 10 (1) of Indian Patent Act, 1970.
OVERCOMING this PATENT SECTION OBJECTION
Generally Preamble of the final independent patent claim will suffice the purpose to overcome this patent examiner objection
According to Section 10 (4) Every complete specification shall—
(a) fully and particularly describe the invention and its operation or use and the method by which it is to be performed;
(b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which protection is claimed;
d) be accompanied by an abstract to provide technical information on the invention
Approach is simple patent claim the percentage and ratio of all constituents in the set of the patent claims with the range. The range and other details should be written in the detailed description of the invention.
Providing the percentage and ratio of all constituents in detailed description section enables a person skilled in art to understand the invention in totality.
If the patent claims are vaguely worded and lacks clarity they attract section 10 (4) of the Indian patent act.
— Prity Khastgir (@BioPatentLawyer) October 31, 2017
Prity Khastgir is a techno-savvy patent attorney and commercial mediator in India with 12 yrs++ of experience working with clients across the globe. Prity has an eye for details. She has responded to 100++ Patent Office Action Responses raised by patent examiner.
Her areas of expertise are IP portfolio research, Patent Office Action Response Reply, cross-border technology transactions, licensing agreements, negotiating business deals, product clearance, freedom-to-operate, patent infringement & invalidity analysis, research & opinions.
She has seen the evolution in India as to how the patent and intellectual property law has evolved in last 10 years in India.
Currently, she helps startups to raise funds, assists foreign companies to find right business partners in India. She also assists enterprises to enter and find the right angels, and VCs in Malaysia, Singapore, US, UK, Japan and India.
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