Tiêu đề Session 1_ Mr. AR.pdf ✅

English High Court, Lane-Fox (1892) at pg. 416 Ayyangar Committee Report at pr. 45 Ayyangar Committee Report English Court ofAppeal, Gadd (1892) at pg. 524 Indian SC, Bishwanath Prasad at para 21, 50 English HL, Merrell Dow at pgs. 88, 91 Not an invention and not patentable (1) Concept Statutory Basis and History That which embodies obviousness 1970Act 2002Amendment 1911Act no separate negative list of what is not patentable Section 3 Unamended Section 3(d) Section 3(c) Sections 3(e) & (f) Changes to Section 3 (d) new form exclusion Ayyangar Committee states that this was universally not patentable; was not an "invention" under earlier law Lord Hoffmann analogy in Merrell Dow “An Invention is not the same thing as a discovery.WhenVolta discovered the effect of an electric current from a battery on a frog’sleg he made a great discovery, but no patentable invention. Again, a man who discoversthat a known machine can produce effects which no one knew could be produced by it before may make a great and useful discovery, but if he does no more his discovery is not a patentable invention :-Britain v. Hirsch, 5 H.P.C. 226, (on p. 232); Harwood v,Great Northern RailwayCompany, 11 H.L.C. 654; Horton v. Mabon, 12 C.B., N.S. 437; Saxby v.GloucesterWaggonCompany), L.R. 7,Q.B.D. 305. He has added nothing but knowledge to what previously existed. A patentee must do something more: he must make some addition, not only to knowledge, but to previously known inventions, and muse use his knowledge and ingenuity so as to produce either a new and useful thing or result, or a new method of producing an old thing or result.” Bibliography Lane-Fox v. Kensington & Knightsbridge Electric Lighting Co. Ltd. (1892) 9 R.P.C. 413 Directive 98/44/EC,The European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions (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; Section 5 “I have suggested a redraft of that clause into two parts ... and in the second those inventions as regards which I have suggested a change in the law. Provided that the product obtained is not a product in respect of which no patent shall be granted under this Act. 2005Amendment Proviso to Section 48(b) was deleted Focus on the term 'mere' and 'discovery' 2002 Amendment is a logical extension of this principle But Section 3(p) removes the possiblity of using creative arguments to overcome novelty and inventive step What are not inventions Gadd v. Mayor of Manchester, (1892) 9 R.P.C. 516 "by defining with precision inventions which should be patentable and by rendering unpatentable certain inventions, the grant of patents, to which will retard research, or industrial progress or be detrimental to national health or well-being;" (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 of which would be contrary to law or morality or injurious to public health; (c) the mere discovery of a scientific principle or the formulation of an abstract theory; (d) 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; (g) a method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture; (h) a method of agriculture or horticulture; (i) any process for the medicinal, surgical, curative, prophylactic or other treatment of human beings or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products. Ayyangar Committee Report at prs. 47-49 "Under the Indian Patents and Designs Act, 1911, the test of patentability of an invention is furnished by the formula—is it a “manner of new manufacture”—a phrase coming down from the U.K. Statute of Monopolies, (21 Jac, 1 ch. 3,1623), and contained in the successive U.K. Patents Acts. These words have been the subject of innumerable decisions and though several general principles have been evolved, there is still a considerable area of uncertainty ... The difficulty, however, in any definition is due to the circumstance that what is termed “subject matter” or “obviousness” is “always the most uncertain issue in patent cases depending as it does upon the temperament and experience of the Judge” (Terrell on Patents, 8th Edition, page 65). The decisions are therefore decisions dependent on one’s feeling, each Judge viewing the invention against the background of his own experience." "...there is considerable advantage in the statute specifying with clarity which ‘inventions’ alone are patentable and which ‘inventions’ should not be patentable. This would (1) eliminate ambiguity and (2) prescribe in precise terms inventions for which patents should be refused in the interests either of national economy or national health or well-being." “I have suggested a redraft of that clause [Section 3] into two parts setting out in the first those inventions which are universally or almost universally not patentable and these comprise the class of inventions for which patents are not now grantable under the Indian Patents and Designs Act, 1911..." Changes to Section 5 Section 5 deleted in full Changes to Section 48 But recollect that "obviousness"/"inventive step" was implied into the term "“manner of new manufacture” (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. (g) was deleted 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 ... 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; 5. In the case of inventions— (a) claiming substances intended for use, or capable of being used, as food or as medicine or drug, or (b) relating to substances prepared or produced by chemical processes (including alloys, optical glass, semi- conductors and inter-metallic compounds), no patent shall be granted in respect of claims for the substances themselves, but claims for the methods or processes of manufacture shall be patentable. Explanation.-For the purposes of this section, "chemical processes" includes biochemical, biotechnological and microbiological processes. (a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India (b) where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India Section 4 not patentable atomic energy inventions Section 3 v/s Section 4? (i) amended 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 or plants to render them free of disease or to increase their economic value or that of their products. (c) extended 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; Ayyangar Committee states that this was universally not patentable; was not an "invention" under earlier law "These cases, and many others which might be cited, establish the following propositions applicable to the present case, viz. :- 1. A patent for the new use of a known contrivance, without any additional ingenuity in overcoming fresh difficulties, is bad, and cannot be supported. If the new use involves no ingenuity, but isin manner and purpose analogousto the old use, although not quite the same, there is no invention; no manner of new manufacture within the meaning of the Statute ofJames. 2.On the other hand, a patent for a new use of a known contrivance is good and can be supported if the new use involves practical difficulties which the patentee has been the first to see and overcome by some ingenuity of his own. An improved thing produced by a new and ingenious application of a known contrivance to an old thing, is a manner of new manufacture within the meaning of the statute" Focus on the term 'mere' and 'discovery' Ayyangar Committee states that this was universally not patentable; was not an "invention" under earlier law "21. It isimportant to bear in mind that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an 'inventive step'.To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before.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, does not qualify for the grant of a patent..." ... "50. ...The patented machine is merely an application of an old invention, known for decades before 1951, for the traditional purpose of scraping and turning utensils, with a slight change in the mode of application, which is no more than a 'workshop improvement', a normal development of an existing manner of manufacture not involving something novel which would be outside the probable capacity of a craftsman.... Nor doesthis combination of old integersinvolve any novelty.Thusjudged objectively, by the testssuggested by authorities, the patent in question lacked novelty and invention." "...Let me elaborate upon an example which was mentioned in argument.The Amazonian Indians have known for centuriesthat cinchona bark can be used to treat malarial and other fevers.They used it in the form of powdered bark. In 1820, French scientists discovered that the active ingredient, an alkaloid called quinine, could be extracted and used more effectively in the form of sulphate of quinine. In 1944, the structure of the alkaloid molecule (C20H24N2O2) was discovered.This meant that the substance could be synthesised. Imagine a scientist telling an Amazonian Indian about the discoveries of 1820 and 1944. He says: "We have found that the reason why the bark is good for feversisthat it contains an alkaloid with a rather complicated chemicalstructure which reacts with the red corpusclesin the bloodstream. It is called quinine."The Indian replies: "That is very interesting. In my tribe, we call it the magic spirit of the bark." Doesthe Indian know about quinine? My Lords, under the description of a quality of the bark which makes it useful for treating fevers, he obviously does. I do not think it matters that he chooses to label it in animistic rather than chemical terms. He knows that the bark has a quality which makes it good for fever and that is one description of quinine. On the other hand, in a different context, the Amazonian Indian would not know about quinine. If shown pills of quinine sulphate, he would not associate them with the cinchona bark. He does not know quinine under the description of a substance in the form of pills. And he certainly would not know about the artificially synthesised alkaloid. ... The Amazonian Indian who treats himself with powdered bark for fever is using quinine, even if he thinks that the reason why the treatment is effective is that the tree is favoured by theGods.The teachings of his traditional medicine contain enough information to enable him to do exactly what a scientist in the forest would have done if he wanted to treat a fever but had no supplies of 10 quinine sulphate..." Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCR 757 Merrell Dow v. H.N. Norton, [1996] R.P.C. 76 Very wide exclusion "in effect"is traditional knowledge which is an aggregation or duplication of known properties of traditionally known component or components. E.g. composition containingTK An area of controversy in biotech space Article 27.2 ofTRIPS Agreement Focus on primary or intended use or commercial exploitation of invention different from the invention itself E.g. kniife v/s use of knife to commit illegal acts (b) amended/expanded (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; TRIPS Agreement Article 27.1 "Subject to the provisions of paragraphs 2 and 3, patentsshall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patentsshall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced." Article 27.2 "2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law." Aricle 27.3(a) Members may also exclude from patentability: (a) diagnostic, therapeutic and surgical methodsfor the treatment of humans or animals; Article 27.3(b) Members may also exclude from patentability: ... (b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Membersshall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof.The provisions of this subparagraph shall be reviewed four years after the date of entry into force of theWTOAgreement. Article 65.4 "To the extent that a developing country Member is obliged by this Agreement to extend product patent protection to areas of technology not so protectable in itsterritory on the general date of application of this Agreement for that Member, as defined in paragraph 2, it may delay the application of the provisions on product patents of Section 5 of Part II to such areas of technology for an additional period of five years." Article 70.8 8.Where a Member does not make available as of the date of entry into force of theWTOAgreement patent protection for pharmaceutical and agricultural chemical products commensurate with its obligations under Article 27, that Membershall: (a) notwithstanding the provisions of Part VI, provide asfrom the date of entry into force of theWTOAgreement a means by which applicationsfor patentsforsuch inventions can be filed; (b) apply to these applications, as of the date of application of this Agreement, the criteria for patentability aslaid down in this Agreement asif those criteria were being applied on the date of filing in that Member or, where priority is available and claimed, the priority date of the application; and (c) provide patent protection in accordance with this Agreement asfrom the grant of the patent and for the remainder of the patent term, counted from the filing date in accordance with Article 33 of this Agreement, for those of these applicationsthat meet the criteria for protection referred to in subparagraph (b). Traceable to correponding EPC provision EU Biotech directive provides guidance. Examples include processes for cloning human beings; processes for modifying the germ line genetic identity of human beings; uses of human embryos for industrial or commercial purposes; processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes. Article 6(2), EU Biotech Directive Gherulal Parakh v. Mahadeodas Maiya & Ors.,AIR 1959 SC 781 1953 Bill What is not patentable.—The following shall not be patentable under this Act:— (a) an invention the use of which would be contrary to law or morality; (b) the mere discovery of new properties of a known substance; (c) a mere duplication of known devices or juxtaposition of known devices which function independently of one another; (d) a substance prepared or produced by a chemical process or intended for food or medicine other than a substance prepared or produced by any method or process of manufacture particularly described in the complete specification of the invention or by its obvious chemical equivalent. Explanation—In relation to a substance intended for food or medicine, a mere admixture resulting only in the aggregation of the known properties of the ingredients of that substance shall not be deemed to be a method or process of manufacture.”). Rule of interpretation? That which retard research/progress Section 3(a) Section 3(b) - Morality exclusion Sections 3(p) Mix of both novelty and inventive step Zero brand v. Controller, 2024:MHC:2558 Synergistic effect? First order queston Second order question identify the primary use contrary to public order contray to morality serious prejudice to human/plant/animal life or health or to the environment Meaningful difference in language? Immoral v/s Illegal? EPC appears to consider order public and morality in the same breadth induce riots, disorder, promote discriminatory propoganda, encourage criminal activity etc. EPCGuidelines, Part-G, Chapter II-28 Public health E-cigarette orders