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Patents: meaning, patentability and non-patentable inventions

Intellectual Property Rights I · Unit I · Topic 2 of 20 · 8 min read

The definition of invention under the Patents Act, 1970, the three tests of novelty, inventive step and industrial application, product and process patents, the exclusions in sections 3 and 4, and Novartis on section 3(d).

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On this page
  1. 1. Meaning and object of a patent
  2. 2. History of the Indian law, briefly
  3. 3. The three tests
  4. 4. Product and process patents
  5. 5. What are not inventions: section 3
  6. 6. Novartis and section 3(d)
  7. 7. Problem
  8. How this is examined
Cases checked to exist. Read the judgment before quoting a holding.

Every case cited here has been checked to exist — the citation resolves and names the right parties. The propositions attributed to each case have not been verified line by line against the judgment. Case names link through to the full judgment: read it before quoting a holding in an examination answer, and never carry a proposition from notes into court on trust.

One definition, three tests, one list. Every patentability answer is built on section 2(1)(j): an invention is a new product or process involving an inventive step and capable of industrial application. If the subject passes those three tests, you then check it against the exclusions in section 3 and section 4. Both halves must appear.

1. Meaning and object of a patent

A patent is a grant by the State of an exclusive right, for a limited period, to prevent others from making, using, offering for sale, selling or importing an invention without the patentee’s consent. Section 2(1)(m) of the Patents Act, 1970 defines it simply as a patent for any invention granted under the Act; the content of the right is in section 48. The term is twenty years from the date of filing the application (section 53).

The object is a bargain. The inventor discloses the invention fully in a complete specification, which is published; in return he gets a limited monopoly. After twenty years the invention passes into the public domain. Patents are meant to encourage invention, to secure that inventions are worked in India on a commercial scale, and not to give monopolies for the importation of the patented article: section 83 states these principles in terms.

2. History of the Indian law, briefly

3. The three tests

(a) Novelty. A “new invention” is one not anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing with complete specification; the subject matter must not have fallen in the public domain or form part of the state of the art (section 2(1)(l)). Novelty is absolute and worldwide. Sections 29 to 34 deal with anticipation and its exceptions, such as display at a notified exhibition or disclosure in a paper read before a learned society within the permitted period.

(b) Inventive step. A feature of an invention that involves technical advance as compared to existing knowledge, or has economic significance, or both, and that makes the invention not obvious to a person skilled in the art (section 2(1)(ja)). In Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, 1978 INSC 258, (1979) 2 SCC 511, the Supreme Court revoked a patent for a method of making utensils because it was a mere workshop improvement of known methods. The Court said the test of obviousness is whether the step would have been obvious to a person of ordinary skill in the art, and that the grant of a patent by the Controller is no guarantee of its validity.

(c) Industrial application. The invention must be capable of being made or used in an industry (section 2(1)(ac)). A theory with no practical use fails.

4. Product and process patents

A product patent protects the thing itself, however made: under section 48(a) the patentee may stop others from making, using, offering for sale, selling or importing the product. A process patent protects a method; under section 48(b) the patentee may stop others from using the process and from using, selling or importing the product obtained directly by it. A competitor who reaches the same product by a different process does not infringe a process patent, which is why the pre-2005 regime suited Indian generic manufacturers. Section 104A shifts the burden to the defendant in process-patent suits in certain cases.

5. What are not inventions: section 3

Section 3 lists subject matter that is not an invention even if it is new. The clauses most often asked:

Clause (g) was omitted in 2002. Section 4 separately bars patents for inventions relating to atomic energy falling within section 20(1) of the Atomic Energy Act, 1962.

6. Novartis and section 3(d)

In Novartis AG v. Union of India, 2013 INSC 198, (2013) 6 SCC 1, Novartis sought a patent for the beta crystalline form of imatinib mesylate, the anti-cancer drug sold as Glivec. Imatinib was already known. The Supreme Court held that the beta crystalline form was a new form of a known substance and that, for a medicine, “efficacy” in section 3(d) means therapeutic efficacy. Better flow properties, thermodynamic stability and lower hygroscopicity did not show enhanced therapeutic efficacy, and a claimed 30 per cent higher bioavailability was not proved to translate into it. The application was rejected. The Court rejected the argument that section 3(d) was contrary to TRIPS and explained that it was enacted to prevent “evergreening”, that is, extending a monopoly by minor changes to a known drug.

Trap. Novartis did not hold that incremental pharmaceutical inventions are never patentable. It held that a new form of a known substance must show enhanced therapeutic efficacy to clear section 3(d). Write it that way.

7. Problem

A physics teacher explains a principle of physics in his class. One of his students makes a working invention producing a new result by putting into use the principle taught by his teacher. Who has the patent right? (February 2025)

Issue. Whether the teacher, who taught the principle, or the student, who applied it in a working device, is entitled to a patent.

Law. Section 3(c) excludes the mere discovery of a scientific principle or formulation of an abstract theory. Section 2(1)(j) requires a new product or process with an inventive step and industrial application. Section 6 allows an application by the person claiming to be the true and first inventor, his assignee or legal representative.

Application. The principle itself, whether discovered by the teacher or taken from textbooks, cannot be patented by anyone. What can be patented is a practical application of it: a working device producing a new result. That device was conceived and built by the student. The teacher did not contribute to the inventive concept of the device; he only taught known science, and teaching does not make him an inventor. If the device is new, not obvious to a person skilled in physics, and capable of industrial use, the student is the true and first inventor. Section 47(3), which allows use of a patented invention for imparting instructions to pupils, shows that the Act treats teaching and inventing as different things.

Conclusion. The student is entitled to apply for and obtain the patent. The teacher could be a joint inventor only if he contributed to the conception of the device itself, which the facts do not suggest.

How this is examined

August 2024 asked “What is a patent? Explain the fundamental principles governing registration of patent” and a short note on patentable inventions; January 2026 asked for a note on “non-patentable inventions in India”; February 2025 asked to “Define patent” and set the physics teacher problem. For the essay, give the definition, the three tests with section numbers, product and process patents, and close with section 3 and Novartis. For the short note on non-patentable inventions, list the clauses of section 3 with one example each and add section 4.

Now try the real questions: Intellectual Property Rights I past question papers.