DISSECTING SECTION 3 OF THE INDIAN PATENTS ACT

Section 3 of the Indian Patents Act contains a lengthy list of what inventions are not

patentable in India. However, what makes Section 3 fascinating is the presence of certain

words that may act as a gateway to interpretation and/or understanding the intent of the

legislature. In this article, we delve into some such words.

Section 3(c) – Delineating Invention from Discoveries

Section 3(c) prohibits the patenting of mere discoveries of scientific principles, formulation

of abstract theories, or discovery of any living thing or non-living substance occurring in

nature. Fairly straightforward to interpret, what’s the catch, you may wonder? Well, the catch

lies in the presence of the word “mere”, before “discovery of a scientific principle”. Here, the

word “mere” stands for “nothing more than”.

Therefore, Section 3(c) only prohibits patenting of inventions that are nothing more than a

discovery. In other words, if an invention requires at least some experimentation to be arrived

at (as compared to only exploration and observation), it may fall outside the purview of

Section 3(c).

Section 3(d) – Separating the Adults from the Kids

Among other things, Section 3(d) prohibits the patenting of mere discoveries of new form of

known substances which do not result in the enhancement of the known efficacy of those

substances. Here, again, the catch lies in the presence of the word “mere”, before “discovery

of a new form of a known substance”. In addition, the presence of the word “efficacy” creates

a further complication, which has subsequently been clarified by the Supreme Court to refer

to “therapeutic efficacy” (pharmacodynamic characteristics).

Having said that, in the matter of Indian Patent Application Numbered 202337012007, the

Controller held that improved drug release and bioavailability constitute valid technical

Effects!

Oh, and another letter that deserves attention is one that we often pay the least attention to,

which is the letter “a”, as in “a new form of a known substance”. It’s another matter

altogether that the Patent Office invokes Section 3(d), by mosaicing multiple documents,

which is not permissible.

Section 3(k) – The per se Conundrum

Section 3(k) prohibits mathematical or business methods or computer programmes per se or

algorithms. What’s the fuss, you may wonder? Well, it surrounds the two words “per se” (a

Latin expression that means “by itself”), which appear after “computer programme”.

Thus, only inventions that are by themselves computer programmes are not patentable. The

Courts have subsequently clarified that inventions must be examined holistically. The Courts

have further held that technical effect and technical contribution are to be given due

consideration, in determining whether an invention falls under the purview of Section 3(k).

Section 3(p) – The Biopiracy Safeguard

Section 3(p) prohibits inventions that in effect, are traditional knowledge or which are an

aggregation or duplication of known properties of traditionally known component or

components. The phrase “in effect” stands for “in fact”. While other important subsections of

Section 3 have received the Courts’ attention, to a certain extent, Section 3(p) still has a long

way to go.

For example, if an invention relates to a composition comprising ten ingredients, and a TKDL

(Traditional Knowledge Digital Library) document discloses four of the ten ingredients, as

part of a larger composition comprising thirty five ingredients, does the invention still fall

under the purview of Section 3(p)?

What is the specific teaching, suggestion, or motivation to pick out those four ingredients

from the thirty five ingredients, and combine the same, with the teachings of other

documents, to arrive at the claimed invention? On whom does the burden of proof lie? Does

the applicant have to recreate the cited document’s invention with 35 ingredients, and

generate comparative data, to prove technical superiority?

Patent Attorneys in Chennai

Have an invention in hand, but don’t know how to proceed further? Confused whether you

should file for a patent or a copyright? Fret not, your friendly neighbourhood patent

professionals are just a phone call or email away.