Section 3(f) of the Indian Patents Act: What It Is and How to Overcome It

A DEEP DIVE INTO SECTION 3(f)

The Indian Patents Act lays down specific exclusions that define what does not qualify as a patentable invention. Among these, Section 3(f) serves as a critical filter for evaluating the inventiveness of inventions that involve arrangements. In this blog, we’ll unpack what Section 3(f) is, and how innovators can effectively navigate Section 3(f) objections.

WHAT IS SECTION 3(f)?

Section 3(f) states:

“The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way is not an invention.”

In simpler terms, if an invention is just a combination of existing devices that each work independently and exactly as expected, it lacks inventive merit and cannot be patented.

WHY DO OBJECTIONS ARISE UNDER SECTION 3(f)?

Patent examiners raise objections under this clause when a claimed invention is simply a combination of known elements or components, where each element or component performs its usual, known function, without any novel synergy, leading to lack of technical advancement or inventive step.

These objections essentially question: What’s inventive or non-obvious here? And how does it go beyond what’s already known?

HOW TO OVERCOME SECTION 3(f) OBJECTIONS?

To address objections under Section 3(f), applicants should focus on functional integration and improved results achieved by the combination. Here are some key strategies:

1. Demonstrate Synergistic Interaction

Highlight how the components do not just function independently, but rather, work together to create improved benefits or improved performance (or technical effect).

2. Establish Technical Advancement

Explain how the arrangement leads to a technical improvement – for instance, better efficiency or reliability.

3. Include Experimental or Comparative Data

Submit test results or performance comparisons to show how the combined system outperforms conventional setups.

4. Framing of Claims

Carefully draft the claims to emphasise the integration, rather than mere juxtaposition of known elements.

NOTABLE CASE LAWS 

In British Celanese Ltd. v. Courtaulds Ltd., Lord Tomlin held that putting together old, known items, where each one works separately and doesn’t affect the others, is not enough. That’s just placing things side-by-side, and does not amount to inventing something new.However, if those items work together in a connected way that results in something new or improved, then that combination may be patentable.

In Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries, the Indian Supreme Court held as follows:

“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.  It must produce a new result, or a new article or a better or cheaper article than before. The new subject matter must involve "invention" over what is old. 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”.

CONCLUSION

Section 3(f) plays a pivotal role in filtering out routine combinations from true inventions. For patent seekers, the key lies in demonstrating a non-obvious, functional interaction between known components, leading to improved results. While objections under Section 3(f) can be challenging, they can be overcome, especially when supported by a well-drafted specification, clear claims, and technical reasoning.