Issues Concerning Patenting Inventions Relating to Plants, Animals and Microorganisms

The Patent Act, 1970 specifies what are not considered inventions under Section 3. Section 3(b) of the Act earlier recited: ‘What are not inventions - an invention the primary or intended use of which would be contrary to law or morality or injurious to public health;

This definition was brief and the words tapered the scope of the section. An amendment was brought in 2002, to accommodate the TRIPS regulations. The amendment resulted in a new and more descriptive definition of the section.  The section now reads -

‘3(b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;’ [Is not invention]

The Amendments:

TRIPS mainly aimed at excluding subject matter relating to medical methods, or those contrary to public order and morality, and subject matter covering plants and animals, and essentially biological processes from being patentable subject matter.

The amendments were hence made in 2002 to bring under the Act, the regulations of TRIPS and to extend the scope of the Act to protect plants, animals and human beings alike. Along with Section 3(b), Sections 3(h), 3(i), 3(j) and Section 3(p) were amended with a similar point of view.

According to Section 3(h), methods of agriculture or horticulture are not patented. Further, Section 3(i) prohibits patenting process used in medicine and treatments of human beings and animals, both either as part of treatment and for increasing their economic value or the economic value of their products.

Section 3(j) includes further provisions to prevent patenting of plants and animals as a whole or in part thereof. The Section further prevents patenting of ‘biological processes for production or propagation of plants and animals’. However, micro-organisms are patentable subject matter.

Section 3(p) prohibits patenting of traditional knowledge.

Coming to the point where these sections are considered eco-friendly, it is important to note that all the above mentioned sections have a direct impact on the protection of bio diversity. The debate on Technology V. Bio diversity will always appear in the front row, and as always, a check on the use of technology is the only supportive argument.

The Seed Act 1966, the Bio-diversity Act, 2002, The Protection of Plant Variety and Farmer’s Rights Act, 2001 are all laws brought forward to support the cause. For example, the Section 6 of the Biodiversity Act says- ‘Application for intellectual property rights not to be made without approval of the National Biodiversity Authority’.

The Laws:

Laws that are in contrary to public order and morality have always faced criticism. Article 19 of the Indian Constitution holds any Act violating or hindering the operation of law an offence. In other words the main aim of any law is to bring order and to protect the moral and social values in the society.

The patent laws emphasize the need for novelty, non-obviousness, utility and the presence of a human intervention, when it comes to biological matter.

Plants and Patents:

Though “Bio-Diversity” is an ‘all-inclusive’ word, it is more often used as a synonym for “Plants and Animals”

Inventions that drastically affect both Plants and Animals are not patentable under the Section 3(b).

This however is not accepted without arguments that for more than one reason, people would want better technology. The need is as simple as the explanation for livelihood. Man depends on plants and animals in numerous ways and inventions that help better are always welcome. Be it the chemical preparation of weedicides and insecticides or the enormous saws that bring down gigantic trees, man wants it all. For example, US7520118 and EP1583434 are patents that are granted to machines that cut down plants. Genetically modified crops are also a big hit in the market.

In R.W.Emerson’s words, a weed is a plant whose virtues have not yet been discovered. However, the general perceptions of weeds outweigh the good points about them. Where on one side one may argue about soil stability, a farmer would argue about the reduced crop quality.

Monsanto, an agricultural company tried to claim protection to its “Method for producing a transgeneric plant (with increased stress tolerance)” the application was rejected protection by India’s Patent Office, and the same was upheld by the Intellectual Property Appellate Board on the grounds that the invention lacked inventive step.

Patents on Animals:

Dolly, the first cloned sheep was refused a patent in US. Though the creators succeeded in getting a patent on the process used, the USPTO refused the patent on Dolly (claiming actual cloned animals) and said – “Dolly’s genetic identity to her donor parent renders her un-patentable”

It may be noted that microorganisms on the other hand are considered patentable subject matter even in India. In the matter of Diamond v. Anand Chakrabarty (a case in the US), the applicant had developed a bacterium capable of breaking down crude oil. The application was initially rejected on the ground that living things cannot be patented. However, the invention was considered on appeal and a patent was granted, making it the land mark judgment on patenting microorganisms.

Under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, it was decided that deposits of microorganisms was to be made at an International Depositary Authority (IDA) on or before the filing date of the complete patent application. In India, Microbial Type Culture Collection and Gene Bank (MTCC) – Institute of Microbial Technology, Chandigarh and Microbial Culture Collection  Centre (MCC), Pune are the IDAs.

Gatekeeper Patents:

Generally, most gene patents act as gatekeeper patents. Gatekeeper patents are patents that stop an invention from getting patented because the new technology or process relies on the existing technology or process. For example : Human Genome Sciences Inc. (HGS), obtained patent over a human gene CCR5 that was later identified to have key role in HIV infection. It was much later that the importance of the gene was understood and if the applicant desired, the patent on the gene could have hindered the research on AIDS and HIV.

A gene can qualify for a patent only if it is isolated and a change has been made in-vitro.

In conclusion, the laws in India are quite restrictive with respect to patenting of inventions concerning plants, animals and humans. While, such a restrictive approach may be good for the nation at present, if all the countries were to adopt similar approach, then research will be adversely affected, since patent protection (in other words monopoly) is most often the core incentive for researchers in the fields of science and technology.

I hope you found this article helpful. You may also be interested in reading our article relating to issues concerning patentability of discoveries in India    

Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together. 

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Patent Drawings and their Importance in a Patent Specification

Patent drawings or illustrations in patent applications are the visual form of Patent description or Invention; they aid in understanding the invention clearly. They may include illustration of embodiments, stages, flow charts, chemical equations, several views, reference numbers and photographs (in some cases) of the invention.

The drawings may be required by the law to be in a particular form, and the requirements may vary depending on the jurisdiction. The drawings must preferably show every feature of the invention as specified in the claims. Although it may be noted that inclusion of drawings in a patent application is not mandatory.

Importance’s of Patent Drawings

While including drawings is not mandatory, one may be able to appreciate the importance of providing drawings in a patent application in view of the below example:

Description provided in a patent document:

A spatial logical toy is formed from a total of eighteen toy elements, out of which two sets of eight identical toy elements two connecting elements are provided. The elements of the two sets have cam members with hollows with spherical convex or concave surfaces in-between. The elements are connected by the aid of the cams and the two remaining centrally positioned substantially identical connecting elements each having a T-shape cross-section and when assembled the toy is in the form of a regular or an irregular solid.

Fixation is performed by one single screw passing through bores in the connecting elements. In such a manner the toy elements forming the lateral faces of the spatial logical toy can be rotated along the spatial axes and by yielding several variation possibilities the toy is well suitable for stimulating logical thinking activity.

Will one be able to understand the product described above? Most likely, not. The product being described is a “Rubik's Cube”, and the construction of the same can be better understood when the description is read in light of the below provided drawings.

Patent illustrations - InvnTree

 

There are several issues concerning drawings because of which patent applications may be objected or not granted. Some of the issue due to which objections may be raised are provided below.

Drawings

  • are not included (if the invention cannot be understood without drawings);
  • are not clear;
  • does not show all the features of claims;
  • have improper reference numbers;
  • do not have all reference numbers which are mentioned in description;
  •  receive objections in a Notice of Draftsperson’s Patent Drawing Review;
  • submitted with colour drawings or colour photographs without filing the required petition;
  •  were done with a pencil or other nonblack writing instrument, or on an ink-jet printer;
  •  were submitted in poor quality paper, easily erasable paper and translucent paper, among others;
  •  include incomplete erasures, graphic elements or text that have been overwritten with heavy lines;
  • are done on papers of unacceptable size;
  • done without proper margin;
  •  have lack of hatching in section or cut views;
  • contains lead lines which crossing each other or other figures;
  • have exploded view but not enclosed by a bracket;
  • plit onto different sheets but numbered improperly;
  • have section or cut view but the section plane not included in general view;
  • are in multiple orientations in a same sheet;
  •  are too small to show the details clearly;
  • have poor shading; which does not show the shape or contour clearly of a design patent;
  • are numbered in non-Arabic numerals (other than 1, 2, 3,..); and
  • Objections in previous examination report are not cleared.

​In view of the foregoing discussion, it is important to acknowledge that patent drawings/illustrations have to comply with certain predefined standards. Failure to comply with the standards, and lack of knowledge and skill required for creating patent drawings can lead to objections being raised during patent examination, thereby resulting in increased patent prosecution time and cost.

Below are some of the sample patent illustrations made by InvnTree. The sample illustrations give an idea about how patent illustrations are to be made. InvnTree provides patent illustration services.

I hope you found this article helpful. 

Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together. 

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Can publicly disclosed inventions be patented in India?

In order to obtain a patent in India, the invention should not be disclosed in the public domain prior to filing of a patent application. The link provided below gives a clear understanding that relates to publishing an invention prior to filing the patent application.

http://www.invntree.com/blogs/should-i-apply-patent-publishing-my-invention

Few exceptions are provided in the Indian Patent Act under which the patent application can be filed despite public disclosure, and such public disclosure will not be considered to have been anticipated.

1.      Anticipation by previous publication (Sec. 29)

2.      Anticipation by previous communication to the government (Sec. 30)

3.      Anticipation by public display (Sec. 31)

4.      Anticipation by public working (Sec. 32)

5.      Anticipation by use and publication after provisional specification (Sec. 33)

Anticipation by previous publication (Sec 29)

A complete specification filed shall not be deemed to have been anticipated if the invention has been published prior to filing of the patent application, if the applicant or the patentee proves that the matter published was obtained from him or any person from whom he derives title without his consent or the consent of any such person.

Anticipation by previous communication to the government (Sec 30)

A complete specification filed shall not be deemed to have been anticipated if the invention has been communicated to the government or any person authorised by the government for the purpose of investigation of the invention.

Anticipation by public display (Sec 31)

A complete specification shall not be deemed to have been anticipated if:

the invention has been displayed in an exhibition to which the provisions of the instant section has been extended by the Central Government; or

the invention is described in a publication in consequence of display of the invention in such an exhibition; or

the invention has been used by any person without the consent of the true and first inventor or a person deriving title from him after it has been displayed in such an exhibition; or

disclosing the invention before a learned society or publishing the invention in the transaction of such society;

provided the application is filed within 12 months from aforementioned public display.

Anticipation by public working (sec 32)

A complete specification shall not be deemed to have been anticipated if the invention has been filed within 12 months after the invention has been publicly worked for the purpose of reasonable trial considering the nature of the invention.

 Anticipation by use and publication after provisional specification (sec 33)

A complete specification shall not be deemed to have been anticipated if the invention has been used and published after filing a provisional application.

In conclusion, ideally one should file a patent application before publicly disclosing the invention. However, if a public disclosure is made before filing a patent application, then one can still contemplate patent application filing in light of the provisions discussed above.

I hope you found this article helpful. 

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Issues concerning patentability of discoveries in India

Indian Patent Act provides a list of subject matters that are not patentable. The list is provided under Section 3 of the Act. One of the sub-clauses, Section 3(d), has been widely debated, and is the topic of this article.

Section 3(d) of the Act states: 

What are not inventions:

“the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

Explanation — For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;".

Section 3(d) which earlier read: “the mere discovery of any new property or new use for a known substance …” in the Patents Act 2002, was substituted to be read as – ‘the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance…’ in the amendment in 2005.

On a general note, the Section states, a “mere discovery” of a new form or a new use of a known substance is not patentable. However, the interpretation the Section is far from simple. An attempt to decrypt the lines in Section 3(d) has been made below.

The Indian Courts:

A landmark decision to be considered under the section is the decision upheld by the Supreme Court of India in Novartis AG v Union of India. The constitutional validity of Section 3(d) of was questioned on the ground that the section violated Article 14 of the Indian constitution and did not comply with the regulations of TRIPS. The details of the case can be read in detail at http://supremecourtofindia.nic.in/outtoday/patent.pdf

The issue originated in the year 1997 when a patent application was filed by the petitioner before the Chennai patent office related to drug name ‘GLIVEC’, which was a different version of their already patented drug – ‘ANTI LEUKAEMIA’. The Controller of Patents rejected the application under Section 3(d) of the Indian Patent Act 1970. The court upheld the Controller’s decision. The Court further held that in India, in case of a conflict between the international laws and municipal laws, municipal laws prevail.

The key words that help in the interpretation of the section 3(d) are:

- “Mere Discovery”

The drug ‘GLIVEC’ was called only a “mere discovery” of a previously known drug.

With the use of the word “Mere discovery”, the Section has drawn a line between the words “Invention” and “Discovery”.

- “Efficacy”

The Section puts forward “enhancement of the known efficacy” as another requirement for a substance to be patentable. However, the term “efficacy” or its extent is not explained anywhere in the Act. Looking at the general meaning of the term, which is,   “Power or capacity to produce a desired effect”, it can be derived that a higher level of “invention”/ “effect” is important for a substance to be patented.

With reference to the case mentioned above, the Madras High Court applied a restrictive interpretation and held that the definition of “efficacy” could mean therapeutic efficacy only.

The EPO and the USPTO:

The European Patent office provides a list of exceptions that are not patentable; out of which, in the chapter II, Part 3.1 considers discoveries as un-patentable.

However, under the USPTO, the definition for Inventions reads -

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.

Conclusion:

TRIPS provides flexibility to member nations in framing their patent laws. Hence, patent laws of different countries may have varying stand on patentability of “discoveries”. With respect to India, questions on patentability of discoveries, the differentiation between “Invention” and “Discovery”, and scope of the word “efficacy” prevail, and the courts have a major responsibility to take over.

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US Patent Cases Weekly Update September 9th September 16th, 2014

In an endeavour to keep patent enthusiasts abreast with the latest patent related activities in leading geographies, we provide a weekly update of patent cases filed in the US.

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Patent Office India Published Patent and Design registration Information September 12th, 2014

Indian Patent Office publishes patent information on a weekly basis (on Friday each week). This is a public notification, enabling you to take appropriate action if desired.

Data sourced from Indian Patent Office by Team InvnTree.

The attached Pdf can be downloaded here

and can also be accessed  below.

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The publication includes published patent applications, design registration and granted patents, among other information, for the week of  September 12th, 2014

You may go through this publication, and if you find patent information that has an impact on your business, then you may take appropriate actions, such as: 
1.    File pre-grant opposition on filed patents 

2.    File post-grant opposition on granted patents 
 
I hope you find this data helpful. Check our patent services  page to find out if we cater to your needs.
In addition to providing other India specific patent services, InvnTree provides patent services such as, PCT National Phase filing in India
 
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US Patent Cases Weekly Update September 2nd September 9th, 2014

In an endeavour to keep patent enthusiasts abreast with the latest patent related activities in leading geographies, we provide a weekly update of patent cases filed in the US.

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Patent Office India Published Patent and Design registration Information September 5th, 2014

Indian Patent Office publishes patent information on a weekly basis (on Friday each week). This is a public notification, enabling you to take appropriate action if desired.

Data sourced from Indian Patent Office by Team InvnTree. 

If you would like to get weekly email updates of  Indian Patent office's published patent information, Subscribe to this service free of cost 

The publication includes published patent applications, design registration and granted patents, among other information, for the week of  September 5th, 2014

You may go through this publication, and if you find patent information that has an impact on your business, then you may take appropriate actions, such as: 
1.    File pre-grant opposition on filed patents

2.    File post-grant opposition on granted patents 
 
I hope you find this data helpful. Check our patent services  page to find out if we cater to your needs.
In addition to providing other India specific patent services, InvnTree provides patent services such as, PCT National Phase filing in India
 
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US Patent Cases Weekly Update August 26th September 02nd, 2014

In an endeavour to keep patent enthusiasts abreast with the latest patent related activities in leading geographies, we provide a weekly update of patent cases filed in the US.

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Patent Office India Published Patent and Design registration Information August 29th, 2014

Indian Patent Office publishes patent information on a weekly basis (on Friday each week). This is a public notification, enabling you to take appropriate action if desired.

Data sourced from Indian Patent Office by Team InvnTree.

The attached Pdf can be downloaded here  and can also be accessed  below.

If you would like to get weekly email updates of  Indian Patent office's published patent information, Subscribe to this service free of cost 

The publication includes published patent applications, design registration and granted patents, among other information, for the week of  August 29th, 2014

You may go through this publication, and if you find patent information that has an impact on your business, then you may take appropriate actions, such as: 
1.    File pre-grant opposition on filed patents 

2.    File post-grant opposition on granted patents 
 
I hope you find this data helpful. Check our patent services  page to find out if we cater to your needs.
In addition to providing other India specific patent services, InvnTree provides patent services such as, PCT National Phase filing in India
 
Also, feel free to contact us or ask us  a question and have it answered within 24 hours.This work is licensed under a  Creative Commons Attribution-NonCommercial 3.0 Unported License