LLM Group 3 Law of Intellectual Property and Information Technology Law of Patents 2023 Question Paper with Solutions

NOVELTY. Section 2(1)(l) defines a new invention as one NOT ANTICIPATED BY PUBLICATION IN ANY DOCUMENT OR USED IN THE COUNTRY OR ELSEWHERE IN THE WORLD before the date of filing, so that the subject matter has NOT FALLEN INTO THE PUBLIC DOMAIN or formed part of the STATE OF THE ART. The standard is ABSOLUTE: a disclosure anywhere in the world, in any language, destroys it. Section 13 requires the examiner to search for anticipation by prior publication and prior claiming, and sections 29 to 34 preserve the applicant in the limited cases of publication without his consent, communication to Government, display at a notified exhibition or a paper read before a learned society followed by an application within TWELVE MONTHS, and public working for REASONABLE TRIAL within one year.

The exclusions cover mere DISCOVERIES of scientific principles, abstract theories and things occurring in nature under clause (c); NEW FORMS of known substances without ENHANCED EFFICACY under clause (d); mere ADMIXTURES and REARRANGEMENTS under clauses (e) and (f); methods of AGRICULTURE OR HORTICULTURE under clause (h); methods of MEDICAL TREATMENT under clause (i); PLANTS AND ANIMALS other than micro-organisms under clause (j); MATHEMATICAL AND BUSINESS METHODS, COMPUTER PROGRAMMES PER SE and ALGORITHMS under clause (k); LITERARY AND ARTISTIC WORKS under clause (l); mental acts and games under clause (m); PRESENTATION OF INFORMATION under clause (n); TOPOGRAPHY OF INTEGRATED CIRCUITS under clause (o); and TRADITIONAL KNOWLEDGE under clause (p); besides frivolous and immoral inventions under clauses (a) and (b).

Novartis AG v. Union of India, (2013) 6 SCC 1, is the decisive authority on clause (d). The beta crystalline form of imatinib mesylate was refused although it was new and although the applicant proved improved flow properties, thermodynamic stability, lower hygroscopicity and a thirty per cent increase in bioavailability. The Court held that EFFICACY in the pharmaceutical field means THERAPEUTIC EFFICACY and that section 3(d) is a SECOND TIER OF QUALIFYING STANDARDS additional to novelty and inventive step.

Section 28 preserves the human interest in the grant: a person who claims to be the TRUE AND FIRST INVENTOR may ask the Controller to MENTION HIM AS INVENTOR in the patent, which does not confer any property but records who made the thing.

The fourth essential: the DISCLOSURE must be sufficient, section 10

The patent is paid for with the specification, so its adequacy is a condition of the grant. Section 10(4) requires a complete specification to FULLY AND PARTICULARLY DESCRIBE the invention and its operation or use and the method by which it is to be performed, to DISCLOSE THE BEST METHOD known to the applicant, to END WITH CLAIMS defining the scope of the invention and to be accompanied by an ABSTRACT. Where BIOLOGICAL MATERIAL cannot be described and is not available to the public, the proviso requires DEPOSIT with an international depositary authority under the BUDAPEST TREATY not later than the filing date, and disclosure of the SOURCE AND GEOGRAPHICAL ORIGIN. Section 10(5) requires the claims to relate to a SINGLE INVENTIVE CONCEPT and to be CLEAR, SUCCINCT AND FAIRLY BASED.

The application must be PUT IN ORDER FOR GRANT within SIX MONTHS of the first examination report under section 21, extendable by three, the period having been reduced from twelve months by the Patents (Amendment) Rules, 2016; otherwise it is DEEMED ABANDONED.

It must survive PRE-GRANT OPPOSITION under section 25(1), open to ANY PERSON, the Controller now deciding MAINTAINABILITY first under the 2024 Rules.

Only then does section 43 require the patent to be GRANTED, section 45 dating it from FILING and section 53 giving it TWENTY YEARS from that date.

What is NOT an essential, and is often thought to be

Four things a candidate may be tempted to list are not conditions of grant at all, and saying so shows command of the subject.

COMMERCIAL SUCCESS OR UTILITY. The Act requires INDUSTRIAL APPLICABILITY, not usefulness in any economic sense. An invention nobody would buy is patentable if it can be made or used in an industry. Commercial success may be evidence AGAINST obviousness, because a long felt want met at once suggests the step was not obvious, but it is evidence and not a requirement.

Conclusion. The essentials for the grant of a patent are five. The subject must be an INVENTION within SECTION 2(1)(j), that is NEW as defined absolutely by section 2(1)(l), involving an INVENTIVE STEP as defined by section 2(1)(ja) and tested as in Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, and CAPABLE OF INDUSTRIAL APPLICATION under section 2(1)(ac). It must not fall within the seventeen exclusions in SECTION 3 or the atomic energy bar in SECTION 4, Novartis AG v. Union of India holding section 3(d) to be a second tier of qualifying standards and Ferid Allani v. Union of India confining section 3(k) to programmes PER SE. The applicant must be the TRUE AND FIRST INVENTOR or his assignee or legal representative under SECTION 6. The specification must satisfy SECTION 10, describing fully and particularly, disclosing the BEST METHOD, ending with clear and fairly based CLAIMS and depositing biological material under the Budapest Treaty. And the PROCEDURAL conditions must be met: a complete specification within twelve months, publication at eighteen months, a REQUEST FOR EXAMINATION within THIRTY ONE MONTHS, the application put in order within SIX MONTHS of the first examination report, and survival of pre-grant opposition, before section 43 requires the grant.