What is a patent? What are the various conditions of patentability? What is the
concept of exclusive right of a patent owner?
Intellectual property rights have come to occupy an increasingly important place in the
world today. The expression ‘intellectual property’ itself connotes a string of rights
available for the protection and exploitation of technology. Intellectual property law is
generally understood in two categories: industrial property which concerns patents,
trademarks, designs etc. and copyrights which concerns literary and artistic works. The
major goals if any intellectual property system are safeguarding the rights of an inventor
in his invention and facilitating economic and social growth by providing an impetus to
the advancement of science and technology.
I. Patents- A brief background:
Patents in some form or the otherr have been recognised since times immemorial. The
history of patents and patent laws is generally considered to have started in Italy with a
Venetian Statute of 1474 which was issued by the Republic of Florence. They issued a
decree by which new and inventive devices, once they had been put into practice, had to
be communicated to the Republic in order to obtain legal protection against potential
infringers. The first patent in the United States was granted in 1970 to Samuel Hopkins
for making ‘pot ash and pearl ash by a new process’.
As seen above, a patent is a form of industrial property. A patent may be broadly
described as a monopoly right conferred by the state to an inventor to industrially and
commercially exploit his invention at the cost of making a complete disclosure of the
details of his invention. A patent is thus a statutory privilege granted by the Government
to an inventor, and to other persons deriving their rights from the inventor, for a fixed
period of years, to exclude other persons from manufacturing, using or selling a patented
product, or from utilising a patented method or process. At the expiration of the period of
the patent, the patented invention is available to the general public or as it is sometimes
put, falls into the public domain.
II. Objects of patent law:
In the case of Bishawanath Prasad Radhey Shyam v. Hindustan Metal Industries, ((1979)
2 SCC, 511) it has been held by the Supreme Court:
‘[T]he 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 mew inventions of commercial utility.
The price of the grant of monopoly is the disclosure of the invention at the Patent Office,
which after expiry of the fixed period of monopoly, passes into the public domain.’
The Court of England, too, in Chiron Corporation v. Organon Technika Ltd (29 
FSR) has justified the patent system in pragmatic words stating:
‘… it is generally accepted that the opportunity of acquiring monopoly rights in an
invention stimulates technical progress in at least four ways. First it encourages
research and invention; secondly, it induces an inventor to disclose his discoveries
instead of keeping them a secret; thirdly, it offers a reward for the expense of developing
inventions to the state at which they are commercially practical and, fourthly, it provides
an inducement to invest capital in new lines of production which might not appear
profitable if many competing producers embark on them simultaneously…’
The patent system with its twin requisites of lawfully rewarding the creators of the
invention, for a limited time, in return for disclosure of the method of working the
invention to the public, provides the most reliable means of linking technological
invention with the development process of the country. The Patent law recognizes the
exclusive right of the patentee to gain commercial advantage out of his invention. This is
to encourage the inventors to invest their creative facilities, knowing that law would
protect their inventions.
III. The patent system in India
The history of the Indian Patent system can be traced to 1856, when Act VI of 1856 on
protection of inventions based came to be enacted. The Act conferred certain exclusive
privileges to inventors of new manufacturers for a period of 14 years. The law concerning
patents was then drafted a number of times and finally culminated into the Indian Patents
Act, 1970. However, to maintain India’s obligations under the TRIPS regime, this Act
came to substantially amended in 2002 and again in 2005.
Section 2(1) (m) of the Act defines ‘patent’ as ‘patent means a patent for any invention
granted under this Act’. An ‘invention’ has been defined under section 2(1) (j) as
‘invention means a new product or process involving an inventive step and capable of
industrial application’. An ‘inventive step’ under the Act is ‘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’ while ‘capable of industrial application’ means that the invention must be ‘capable
of being made or used in an industry’ The Act also defines a 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’.
Therefore, the criteria for an invention to be patentable are,
(1) An invention must be novel
(2) has an inventive step and
(3) is capable of industrial application
IV. Conditions of patentability:
In order to form the subject matter of a patent, an invention must be non-obvious
(involving and inventive step), novel (it should not have been published in any literature
form before the filing of patent) and industrially applicable.
Novelty means what is new and original, never seen or done before. An invention is
taken to be new if it does not form a part of the state-of-the-art. In order to be patentable,
the new subject must involve invention over what is old. It is not essential that the
invention should be anything complex or complicated. It must merely be of such nature
that it involves a technical advance as compared to the existing knowledge. As observed
by Cotton LJ in Blakey & Co. v. Lathem & Co. ( 6 RPC 184 (CA))
‘To be new in the patent sense, the novelty must be shown in the invention. It is not
enough that the purpose is new or that there is novelty in the application, so that the
article produced is in that sense new. There must be novelty in the mode of application.’
For an invention to be judged as novel, the disclosed information should not be available
in the ‘prior art’. This means that there should not be any prior disclosure of any
information contained in the application for patent (anywhere in the public domain, either
written or in any other form, or in any language) before the date on which the application
is first filed i.e. the ‘priority date’. Although the term ‘prior art’ has not been defined
under the Indian Patents Act, it shall be determined by the provisions of section 13 read
with the provisions of sections 29 to 34 of the Act.
An invention shall not be considered novel if it has been:
(a) anticipated by publication before the date of the filing of the application in any of
the specification filed in pursuance of application for patent in India on or after
the 1st day of January 1912;
(b) anticipated by publication made before the date of filing of the application in any
of the documents in any country;
(c) claimed in any claim of any other complete specification filed in India which is
filed before the application but published after said application;
(d) anticipated having regard to the knowledge, oral or otherwise, available within
any local or indigenous community in India or elsewhere.
A patent for the new use of a known contrivance is no invention. On the other hand, if the
new use for a known contrivance involves practical difficulties which the patentee has
been able to see and overcome by some ingenuity of his own, such new use would be
patentable (Press Metal Corporation v Noshir Sorabji AIR 1983 Bom. 144).
The Supreme Court in Bishwanath Prasad’s case observed that prior public knowledge of
the alleged invention would disqualify the grant of a patent. Publications concerning the
invention whether through word of mouth or through books or media would, therefore
nullify any subsequent attempt to secure a patent. In view of this principle, the Court of
Appeal in England in Fomento v Mentomore (1956 RPC 87 denied patent rights to a
designer of an improved design of a ball-point pen, on the grounds that the inventor
himself had published a description of making ball point pens and had made two pens
embodying the invention available to the members of the public before filing the patent
As seen above, an inventive step is one which makes the invention non-obvious to a
person skilled in the art. In other words, if the invention is obvious to the person skilled
in the art, it cannot be said to involve an inventive step. After the Amendment in 2005,
the definition of inventive step has been enlarged to include economic significance of the
invention as well. The test to ascertain whether an invention involves an inventive step is
expressed in Halsbury Laws of England as: ‘was it for practical purposes obvious to the
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 should or would make
the invention the subject of the claim concerned.’ In other words, the question to be
answered in determining inventive step is ‘Would a non-inventive mind have thought of
the alleged invention?’ If the answer is ‘no’, then the invention is non-obvious. If the
patent claimed merely includes the development of some existing trade, in the sense that
it is a development as would suggest itself to an ordinary person skilled in the art, it
would fail the test of non-obviousness.
In determining whether an invention involves an ‘inventive step’ and is ‘non-obvious’,
the supervening policy of patent law viz. to reward and encourage invention without
inhibiting improvements of existing technologies by others must be kept in mind.
Although no absolutely uniform test for determination of inventive step can be
formulated, certain broad criteria can be indicated, whether the invention was publicly
known, used or practiced before or at the date of the patent? If the answer is positive, it
shall negate inventive step.
3. Industrial Application:
In order to be patentable, an invention must be capable of ‘industrial application’ i.e. it
must be ‘capable of being made or used in an industry’. This means that the invention
must take the practical form of an apparatus or device-- or an industrial process or
method of operation. ‘Industry’ should be understood in its broadest sense as including
any useful, practical utility as distinct from any intellectual or purely aesthetic activity
and does not necessarily imply the use of a machine or the manufacture of an article.
It is pertinent to note that utility was not a requirement for patentability under the Patents
and Designs Act, 1911. In Bishwanath Prasad’s case, the Supreme Court recognised
utility as one of the grounds on which a patent can be revoked. The usefulness of an
alleged invention depends not on whether by following the directions in the complete
specification all the results not necessary for commercial success can be obtained, but on
whether by such directions the effects that the application/patentee professed to produce
could be obtained. The usefulness of the invention is to be judged, by the reference to the
state of things at the date of filing of the patent application, if the invention was then
useful, the fact that subsequent improvement have replaced the patented invention render
it obsolete and commercially of no value, does not invalidate the patent.
Thus, novelty, non-obviousness, industrial applicability and utility form the essential
requirements of patentability. These conditions have been universally accepted as the
essential prerequisites of patentability.
V. Exclusive rights granted to a patent owner:
As described above a patent is a statutory right granted conferred by thhe state full and
complete disclosure of an invention. A patent right is thus an intangible right which as no
physical existence and shape.
In Vaupel Textilmaschinen KG v Meccanica Euro Italia (20USPQ 2d 1045) it was
observed that ‘a patent is a bundle of rights, which may be divided and assigned or
retained in whole or in part’. Section 48 of the Act describes the rights of patentees as
‘1) Subject to the other provisions contained in this Act, a patent granted before the
commencement of this Act, shall confer on the patentee the exclusive right by himself, his
agents or licensees to make, use, exercise, sell or distribute the invention in India.
(2) Subject to the other provisions contained in this Act and the conditions specified in
section 47, a patent granted after the commencement of this Act shall confer upon the
a. where the patent is for an article or substance, the exclusive right by himself, his
agents or licensees to make, use, exercise, sell or distribute such article or
substance in India;
b. where a patent is for a method or process of manufacturing an article or
substance, the exclusive right by himself, his agents or licensees to use or exercise
the method or process in India.’
Thus the right of commercial exploitation of the invention forming the subject matter of
the patent are exclusively conferred upon the patentee. Just as rights over corporeal
property can be assigned and licensed, a patent also can be assigned and licensed.
These exclusive rights conferred upon patentees are not however absolute in nature. In
other words, these rights may be validly impinged upon in exceptional circumstances.
Section 83 of the Act states that ‘Patents granted do not in any way prohibit Central
Government in taking measures to protect public health’, thus carving out an important
exception to exclusive rights of patentees. Further, section 92 of the Act states that
compulsory licences may be granted by the Central Government ‘in circumstances of
national emergency or in circumstances of extreme urgency or in case of public non-
Thus although the Act recognises the necessity of conferring exclusive rights on
patentees, it has also adequate safeguards to ensure that the monopoly rights conferred
thorough patents are not abused.