What Are Not Inventions: Section 3, Section 4 and Computer-Related Inventions

1. Nature of section 3

Section 3 is a list of statutory exclusions. TRIPS Article 27(2)–(3) permits only certain exclusions (ordre public, methods of treatment, plants and animals), but many of the s.3 clauses (discoveries, mental acts, presentations of information) state what is not an “invention” in the first place, which TRIPS leaves to members. The burden is on the applicant to show that the claim falls outside s.3. Clause (g) was omitted in 2002.

2. The clauses, grouped

3. Discoveries and things found in nature (s.3(c))

A discovery adds to knowledge of what exists; an invention makes something that did not exist. A substance isolated from nature is a discovery unless the applicant shows a technical contribution. The Calcutta High Court in Dimminaco AG v. Controller of Patents (2002) held that a process for preparing a vaccine against bursitis in poultry, whose end product contained a living virus, was not excluded: the old test of “vendible product” and “manner of manufacture” did not bar a process merely because its product was alive. Compare the US: the Association for Molecular Pathology case (2013) on BRCA genes: isolated natural DNA not patentable.

4. Methods of treatment (s.3(i)) and agriculture (s.3(h))

Doctors and farmers should be free to use methods without fear of suit. Surgical, therapeutic and diagnostic methods practised on the human or animal body are excluded; the drugs, devices and diagnostic kits used are not. The EPC (Art 53(c)) and TRIPS Article 27(3)(a) take the same approach. The US, by contrast, allows method-of-treatment patents but immunises medical practitioners from infringement liability (35 U.S.C. §287(c)).

5. Plants, animals and biotechnology (s.3(j))

Plants and animals are excluded in whole or any part, as are seeds and essentially biological processes, following TRIPS Article 27(3)(b). Micro-organisms are not excluded, and the Biotechnology Guidelines of the Patent Office allow genetically modified micro-organisms, vectors and processes. Plant varieties go to the PPV&FR Act, 2001. In Monsanto Technology LLC v. Nuziveedu Seeds Ltd., 2019 INSC 35, the Delhi High Court Division Bench had held that a nucleic acid sequence conferring the Bt trait, once inserted into a plant, was a part of the plant excluded by s.3(j). The Supreme Court set this aside on procedure, holding that the question of validity could not be decided summarily without trial and expert evidence, and remanded. The substantive question therefore remains open. Compare Diamond v. Chakrabarty (US, 1980) and the EU Biotechnology Directive 98/44/EC, which allows patents on biological material isolated or produced by a technical process.

6. Computer-related inventions (s.3(k))

Section 3(k), inserted in 2002, excludes “a mathematical or business method or a computer programme per se or algorithms”. The 2004 Ordinance tried to allow software with “technical application to industry” or “in combination with hardware”, but Parliament dropped that in 2005. The Joint Parliamentary Committee that examined the Bill behind the 2002 amendment explained that “per se” was added because a computer programme may include things ancillary to it or developed from it, and those were not meant to be excluded.

The judicial test. In Ferid Allani v. Union of India (Delhi High Court, 2019), the court held that the bar is only on computer programmes “per se”, and that an invention based on a computer programme is patentable if it shows a technical effect or technical contribution. It noted that almost all modern devices run on software and that refusing all CRIs would be against the intent of Parliament. Later Delhi and Madras High Court decisions have applied this to hold that a claim is not excluded merely because it is implemented in software, if it solves a technical problem (such as improved processing, security or efficiency of a system), and have sent cases back to the Controller to examine the technical contribution.

CRI Guidelines. The Patent Office's Guidelines for Examination of Computer Related Inventions (2016, revised 2017 after objections that the 2016 version required novel hardware) direct examiners to look at the substance of the claim, not its form, and to refuse claims whose contribution lies only in the excluded matter. Business methods remain excluded even if implemented on a computer.

Comparison.

• US: Alice Corp. v. CLS Bank (2014): a claim directed to an abstract idea (intermediated settlement) is not saved by implementation on a generic computer; it needs an “inventive concept” that is significantly more.
• UK: Aerotel Ltd. v. Telco Holdings Ltd. (Court of Appeal, 2006): (1) construe the claim, (2) identify the actual contribution, (3) ask whether it falls solely within the excluded matter, (4) check whether it is technical. The AT&T signposts (2009) help decide technical effect.
• EPO: any hardware makes the claim an “invention” (the “any hardware” approach, G 3/08, 2010), but only technical features count for inventive step (COMVIK, T 641/00). G 1/19 (2021) applied this to computer simulations.

The Indian test after Ferid Allani is close to the European “technical contribution” approach. Inventions involving artificial intelligence are examined under the same framework: an AI model or training method as such is an algorithm, while its application to solve a technical problem may be patentable.

7. Other clauses briefly

• (e) Admixture. A mixture is patentable only if it shows synergy, an effect greater than the sum of its parts; mere aggregation is not.
• (f) Arrangement of known devices. Each device working independently in a known way is excluded; a new combination producing a new working interrelationship is not.
• (p) Traditional knowledge. Added in 2002, backed by the TKDL and the TK grounds of opposition and revocation (s.25(1)(k), s.64(1)(q)).
• (b) Public order and morality. Comparable to EPC Article 53(a); human cloning processes and germline modification would fall here. TRIPS Article 27(2) adds that an exclusion cannot rest merely on the fact that exploitation is prohibited by domestic law.

8. Section 4: atomic energy

No patent shall be granted for inventions relating to atomic energy falling within s.20(1) of the Atomic Energy Act, 1962. The reason is national security and state control of nuclear technology.

How this is examined

A 16-mark question on “inventions not patentable” or a short note on software patents. Use the table, then take (c), (i), (j) and (k) in detail with one case each. In Q2 of 2024 (basic requirements), refer to this note for the subject-matter requirement.