Patentable and non-patentable inventions — Intellectual Property Rights I Notes

Patentable and non-patentable inventions

In 2001 a US company, RiceTec, tried to patent “Basmati”. Around the same time, Indian courts were refusing patents on methods of surgery, antivirus software and a machine that claimed to defy gravity. The common thread: an invention can be brilliant and still be barred — because s.3 says so. This is the biggest problem-question topic in the paper.

The two-step test

To be patentable, an invention must (A) satisfy the positive tests of s.2(1)(j), and (B) not fall in the negative list of ss.3 and 4.

A. The positive tests (what makes an invention patentable)

An “invention” under s.2(1)(j) is a new product or process that has all three:

Novelty — new, not anticipated by prior publication or use anywhere in the world before the priority date.
Inventive step (non-obviousness) — a feature involving technical advance or economic significance that is not obvious to a person skilled in the art (s.2(1)(ja)).
Industrial applicability / utility — capable of being made or used in an industry (s.2(1)(ac)).

Miss any one and there is no invention to patent.

B. The negative list — non-patentable inventions (s.3)

Even a novel, useful, non-obvious idea is barred if it is one of these (learn the clause letters — problems turn on them):

s.3(a) — frivolous inventions, or those contrary to well-established natural laws (e.g. a perpetual-motion or anti-gravity machine).
s.3(b) — inventions contrary to public order, morality, or causing serious prejudice to human, animal, plant life or the environment.
s.3(c) — a mere discovery of a scientific principle, an abstract theory, or discovery of any living thing or non-living substance occurring in nature.
s.3(d) — a mere new form of a known substance without enhancement of known efficacy; mere new use of a known substance (the anti-evergreening clause — Novartis).
s.3(e) — a substance obtained by mere admixture (only aggregating known properties).
s.3(f) — mere arrangement or re-arrangement of known devices each working independently.
s.3(h) — a method of agriculture or horticulture.
s.3(i) — any method of medicinal, surgical, curative or other treatment of human beings or animals. This is the clause for the surgery / epilepsy-cure / limb-surgery problems.
s.3(j) — plants and animals (other than micro-organisms) and essentially biological processes.
s.3(k) — a mathematical or business method, a computer programme per se, or algorithms. This is the clause for the antivirus-software problem.
s.3(m) — a mere scheme, rule or method of performing a mental act or playing a game.
s.3(n) — a mere presentation of information.
s.3(p) — traditional knowledge, or aggregation of known properties of traditionally known components.

C. Atomic energy — s.4

Inventions relating to atomic energy are not patentable at all (s.4, read with s.20(1) of the Atomic Energy Act, 1962). This is the clause for the atomic-energy problem — the answer is a flat “not patentable”.

Patents Act, 1970, s.3(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” — is not an invention.

Patents Act, 1970, s.3(k): “a mathematical or business method or a computer programme per se or algorithms” — is not an invention.

In Simple Terms: First check the invention is new, non-obvious and useful. Then run it past the s.3 blacklist and s.4. Many clever inventions — a cure, a surgery method, software as such, an atomic-energy device — are refused not because they are bad but because the law has fenced them off.

🧩 WORKED EXAMPLE — the method-of-treatment trap

Facts. A neurologist invents a method of curing epilepsy by delivering mild electric shocks to the brain, and seeks a patent for the method.

Rule. s.3(i) — a method of medicinal/curative treatment of human beings is not an invention.

Apply. The claim is to a method of treatment, squarely within s.3(i). It is refused however novel it is. (A new device to deliver the shocks could be patentable — the bar is on the method, not the apparatus.)

Decoy. Do not be distracted by how brilliant or novel the cure is; novelty cannot rescue a s.3(i) subject-matter.

Conclusion. The method is not patentable under s.3(i).

🧩 WORKED EXAMPLE — the software problem

Facts. ‘Z’ invents an antivirus software (“Quick Heal”) and applies for a patent.

Rule. s.3(k) — a “computer programme per se” is not patentable; software is protected by copyright (as a literary work) instead.

Apply. The claim is to a computer programme as such, barred by s.3(k). Unless the software produces a technical effect embedded in novel hardware, it is not patentable. The correct protection is copyright under the Copyright Act, 1957.

Conclusion. No patent under s.3(k); advise the client to seek copyright registration.

💡 EXAM TIP — always name the exact clause.

💡 EXAM TIP — cite the sub-clause, not just “s.3”

The trap. Candidates write “this is not patentable under s.3” and stop, losing half the marks — the examiner is testing whether you can pin the precise clause.

What to write. State the exact letter and paraphrase it: “The method of treatment is barred by s.3(i)”; “the antivirus is a computer programme per se, barred by s.3(k)”; “atomic energy is barred by s.4 read with the Atomic Energy Act, 1962.”

Why it scores. The whole s.3 family is a menu of decoys; naming the right item proves you can classify, which is the skill being examined.

flowchart TD
    START["Is the invention patentable?"]:::root
    START --> T1{"New, inventive, useful (s.2(1)(j))?"}
    T1 -->|"No"| OUT1["Not an invention"]:::leaf
    T1 -->|"Yes"| T2{"On the s.3 / s.4 blacklist?"}
    T2 -->|"Yes"| OUT2["Barred (name the clause)"]:::leaf
    T2 -->|"No"| OK["Patentable"]:::leaf
    classDef root fill:#FFF8DC,stroke:#000,color:#000;
    classDef leaf fill:#E6F3FF,stroke:#1E3A8A,color:#000;

Case Laws

Novartis AG v Union of India (2013) — s.3(d): a new crystalline form of imatinib (Glivec) without enhanced therapeutic efficacy is not patentable.
Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1979) — a mere workshop improvement obvious to a skilled worker lacks inventive step.
Diamond v Chakrabarty (1980) — a genetically engineered micro-organism is patentable (compare s.3(j), which excludes plants and animals but not micro-organisms).

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