Invention and Patent: Meaning and Distinction

1. Invention in ordinary and legal sense

In ordinary speech an invention is anything newly devised. The law uses a narrower, technical meaning. Section 2(1)(j) of the Patents Act, 1970 defines an invention as “a new product or process involving an inventive step and capable of industrial application”. Each term is itself defined:

• New invention (section 2(1)(l)): an invention or technology not anticipated by publication in any document or used in the country or elsewhere before the filing date of the complete specification, that is, one that has not fallen into the public domain and does not form part of the state of the art. Novelty in India is absolute, worldwide.
• Inventive step (section 2(1)(ja)): a feature that involves technical advance over existing knowledge or has economic significance or both, and that makes the invention not obvious to a person skilled in the art (see the separate note on inventive step).
• Capable of industrial application (section 2(1)(ac)): the invention can be made or used in an industry. A theory with no practical use, or a perpetual motion machine that cannot work, fails this test.

The definition follows Article 27(1) of TRIPS, which requires patents for inventions “in all fields of technology” that are new, involve an inventive step and are capable of industrial application, and notes that members may treat the last two as synonymous with “non-obvious” and “useful”, the American terms.

2. Invention distinguished from discovery

A discovery reveals something that already exists in nature, such as a law of physics, a mineral or a microorganism. An invention applies knowledge to produce something new that did not exist, or a new way of doing something. Section 3(c) of the Patents Act excludes “the mere discovery of a scientific principle or the formulation of an abstract theory” and the discovery of any living thing or non-living substance occurring in nature. The distinction is old: in Funk Brothers Seed Co. v. Kalo Inoculant Co. (US Supreme Court, 1948) a mixture of naturally occurring bacteria was a discovery of their qualities, not an invention. The modern applications are:

• Diamond v. Chakrabarty (US Supreme Court, 1980): a genetically engineered bacterium that could break down crude oil was patentable, because it was a product of human ingenuity, “anything under the sun that is made by man” in the phrase drawn from the legislative history.
• Association for Molecular Pathology, the BRCA gene case (US Supreme Court, 2013): isolated naturally occurring DNA sequences (the BRCA genes) were not patentable, although synthetic complementary DNA could be.
• India: Monsanto Technology LLC v. Nuziveedu Seeds Ltd., 2019 INSC 35, (2019) 3 SCC 381. The Delhi High Court Division Bench had held Monsanto’s patent on a nucleic acid sequence for Bt cotton invalid under section 3(j). The Supreme Court set that aside because validity could not be decided summarily in an appeal from an interim order, and restored the single judge’s direction for trial. The underlying question, whether a genetically engineered sequence inserted in a plant is an excluded part of a plant, remains open.

3. What is not an invention: sections 3 and 4

Section 3 lists what is not an invention even if new and useful. The main heads are:

• frivolous inventions or those contrary to natural laws (3(a)); inventions contrary to public order or morality or harmful to life and environment (3(b));
• discoveries and abstract theories (3(c));
• a new form of a known substance without enhanced efficacy, and new uses of known substances (3(d));
• mere admixtures (3(e)), mere arrangement of known devices (3(f));
• agricultural and horticultural methods (3(h)); methods of treatment of humans or animals (3(i));
• plants and animals and essentially biological processes, other than microorganisms (3(j));
• a mathematical or business method, a computer program per se, or algorithms (3(k));
• literary, dramatic, musical or artistic works (3(l)); a mere scheme or rule or method of playing a game (3(m)); presentation of information (3(n)); topography of integrated circuits (3(o));
• traditional knowledge or an aggregation or duplication of its known properties (3(p)).

Section 4 excludes inventions relating to atomic energy. The Delhi High Court in Ferid Allani v. Union of India (2019) held that a computer-related invention showing a technical effect or technical contribution is not excluded by section 3(k) merely because it uses software, which brings India close to the European approach under Article 52 of the European Patent Convention.

4. Patent: meaning

Section 2(1)(m) defines a patent as a patent for any invention granted under the Act. A patent is the bundle of exclusive rights the state grants to the patentee for a limited time in return for disclosure. Under section 48 the patentee of a product may prevent third parties from making, using, offering for sale, selling or importing the product in India; the patentee of a process may prevent others from using the process and from dealing in products obtained directly by it. The term is twenty years from the date of filing (section 53). The right is territorial: an Indian patent gives nothing abroad, and an invention patented abroad is free in India unless patented here.

5. Invention and patent compared

Not every invention is patented. An inventor may choose secrecy (the Coca-Cola formula is the usual example), may publish to put the idea in the public domain, or may find the invention excluded by section 3. Conversely, not every patent covers a real invention: patents are granted after limited examination and are often revoked. In Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, 1978 INSC 258, (1979) 2 SCC 511, the Supreme Court held that the grant of a patent raises no presumption of its validity, because the Controller’s examination is not a guarantee; the court examines validity afresh when it is challenged.

6. Who may apply

Section 6 allows an application by the true and first inventor, his assignee, or the legal representative of a deceased inventor. The “true and first inventor” excludes the first importer of an invention into India and the first person to whom it was communicated from abroad (section 2(1)(y)). The question whether an artificial intelligence system can be an inventor was answered in the negative in Thaler v. Comptroller-General of Patents (UK Supreme Court, 2023) and in the US and at the EPO in the DABUS applications; Indian law speaks of a “person” and the Patent Office has treated a natural person as necessary.

How this is examined

For the essay, open with section 2(1)(j), explain novelty, inventive step and industrial application in a paragraph each, distinguish discovery, list the section 3 exclusions, then give the table comparing invention and patent and close with Biswanath Prasad (no presumption of validity). For an LL.M. answer add the comparative cases (Chakrabarty and the BRCA gene case) and the Indian debate after Monsanto.