The Economic Times reports on a patent conference in Delhi recently stating that:
“….in yet another step to prove its commitment to entrepreneurial facilitation, Amity Innovation Incubator (AII), organised a day long seminar on “Protecting Intellectual Property Rights,” last week, at the university , in collaboration with India Juries, Trademark and Patent Attorneys. “
And then goes on to note the comments of Sweta Rajkumar, an examiner at the Indian Patent Office:
“While addressing the audience at the inaugural session, Rajkumar outlined various existing intellectual property rights including copy rights act 1999, trademarks act 2000, geographical indication act 2000, designs act 2000 and patents amendment act 2002.
Talking about the three major requisites for patentability, she said: “Anything and everything on this earth is patentable provided it is novel, inventive and industry applicable.”
It appears that Ms Rajkumar is blissfully unaware of section 3 dealing with “patentable subject matter”, which is very different from patentability criteria that she highlights in her comment above. And particularly about section 3(d) which has been making continuous waves in all our newspapers (even assuming she missed the section from the text of the Patents Act). In an earlier post, we noted:
““Patent eligibility” broadly refers to the requirement that a subject matter for which a patent is sought be inherently suitable for patent protection, in the sense of falling within the scope of subject matter that patent law prima facie exists to protect. In most jurisdictions, patent eligibility manifests itself in the term “invention,” i.e. a poem, though new, non-obvious and useful is still not patentable, as it is not an “invention.” The term “patentability,” on the other hand, refers to those set of principles that inform the requirements that must be satisfied for a patent eligible subject matter (i.e. an invention) to be granted a valid patent. Principally they are the requirements of novelty, inventive step (non-obviousness), utility (industrial applicability) and sufficient description.
By mandating that a new form without increased efficacy would not amount to an “invention,” section 3(d), in effect, constitutes a patent eligibility standard.”
Section 3 includes several patentable subject matter (or patent eligibility) exclusions such as “method of medical treatment”, “software per se”, “method of agriculture” etc. In other words, although you come up with a new, non obvious and useful “method of agriculture”, you are still not entitled to a patent in India.
What is striking is that this is a statement made by someone in whom the government of India vest the power to decide whether or not society needs to bear the burden of a 20 year monopoly.
Interestingly, her statement on “sub solar patenting” resonates very closely with what was said in the US a long time back (Diamond vs Chakarborty). Though some recent cases in the US are slowly challenging this proposition (in re Bilksy at the CAFC which deals with a method of managing the risk of bad weather through commodities; AND Nuitjen, which deals with the patentability of signals). See the excellent Patently O for a review of these cases.
Perhaps with the increasing number of training and “co-operation” programs conducted by the USPTO in India, we cannot really blame this examiner! See Latha Jishnu’s extremely thoughtful piece here in this regard, where she notes:
“…in December of that year India and the US signed a memorandum of understanding to further cooperation on IP rights, the focus being on the training of personnel with a view “to strengthening the working of the IP systems in the two countries”.
Much of the effort has gone into training our patent examiners, an issue that is threatening to become a hot potato for Delhi.
Over the past year and a half, the USPTO has provided long-term courses for about a dozen patent examiners, apart from week-long courses for sundry others from the customs officials, police and the registrar of copyrights to the judiciary on the technicalities of the American patent system. Even a judge of the Delhi high court has been taken to the USPTO for a short-term course.
This is bound to raise hackles here. India’s patent examiners are, admittedly, ill-equipped and poorly qualified for their task, and the government has done little to set matters right. Instead, it appears to think that training courses in the most sophisticated patent offices of the world is a good way of overcoming the huge problem of human resources in India’s patent system.
Apart from the US, India has signed agreement with the European Patent Office, and the governments of Japan and Switzerland among others for training our patent examiners. Legal experts and health activists, however, believe this is fraught with peril for a developing country that needs to keep public health concerns paramount.
They warn that the strict standards of patentability under India’s patent amendment Act of 2005 are not reflected in the laws of the developed countries where big pharma companies are based. “
Part of this hype and part of this is sheer misunderstanding and ignorance. I think the media
(both English and vernacular) need to know basics before they publish
statements like this or dish out opinions. Time again they fail
to differentiate among patents,
copyrights and GIS and often
use the term patent as a synonym
for IPR.
There are some problems in the patent system that no training can take care. Patent law and policy is not frozen in time and technological advances pose new questions. Unfortunately the
media has no time for these issues
but perhaps thinks that patents are a big boon always and more the number of patents, better it is for economy.
I don’t think you’ve read the post carefully. It had nothing to do with “misreporting” by media, as you allege. Rather it was centered around the statement of a patent examiner.
Its become rather fashionable now to take potshots at the media for their IP reportage. And we often tend to ignore some of the finer reporting that comes out of some of them. No doubt there is tremendous scope for improvement–but lambasting them for just about every blunder committed “under the sun” is not really going to get us anywhere.
US help for patent manual preparation ,US training for patent officials as well as judiciary and finally the ministry’s intent of achieving US patent standard are all part of modernization
embarked upon.so we neednot be surprised.long before this
delhi highcourt has pointed out about the shades of TSM method in cipla vs roche case.
The Indian Patent Office has interpreted the Patent Act to suit its style of functioning. Section 3(f) says that Micro-organisms are patentable while the Office denies patents involving microrganisms citing section 3(c) saying that mere discovery of living things occurring in nature can’t be patented. Same objections are put forth in the case of isolated DNA sequences. The lack of upper level Officers qualified in Biological sciences seems to be the problem. Even among the four offices, there is no uniformity in implementing the Patent act and it is often individual Assistant Controllers unrelated to the subject who take final decisions.But in the abovementioned incident, the examiner of Patents has probably not done her homework well before preparing the speech.
It should be understood, whts Intellectual property is actually in general. The Indian definition is not different from US or Japan or any other country. We can get Patents for many things in US which cannot be patented in India. It does mean that the definition of IP in India is different from US…In general, patentability criteria is: Novelty, Inventiveness, and Industrial Applicability. Since IP protection is provincial, so each country has its own national law for IP in addition to relevant International treaties….I think before, posting such report, reporter should understand the context of Ms Rajkumar clearly…
Anal Prem
This is sheer misunderstanding by the reporter of newspaper and blogger. I was in the seminar and the Examiners were well informed and had good and excellent knowledge about IPRs and IP system.
I think it is a total miscommunication and if anyone from the patent office is commented like this that means that applicability of these laws are so obvious that one examiner need not to mention this while saying. A person who is working in this field for 4-5 years is obviously aware of the basic patents act and rules and the sections of the patents acts are so obvious to them that one who is listening the lecture should understand it, she can expect this atleast. I think before attending such lectures one should be aware of the basics of patent acts so that this type of things will not come to his mind.
Thanks for all your comments. The news reporter in question, Ms Panthry did not just express her opinion on IP. She actually quoted the speaker, Ms Rajkumar.
“Talking about the three major requisites for patentability, she (Ms Rajkumar) said: “Anything and everything on this earth is patentable provided it is novel, inventive and industry applicable.” “
Which is why I find it difficult to believe that the reporter misquoted or misunderstood the speaker, as many of you seem to suggest. There’s only one way to find out: let me write to ET, ask for her details and query her directly.
There is indeed no need to noise this issue to this extend. It might be a slip of tongue by the Examiner.
Having served in Patent Office in a reasonable period of time, the Examiner would have definitely acquired sufficient knowledge regading patentability of inventions.
The Statement of the Examiner viz. “Anything and everything on this earth is patentable provided it is novel, inventive and industry applicable.” can be taken in the right spirit, that she wants to promote more patents from India.
But while addressing a Public forum as a representative of Patent Office, the Examiner holds more accountability as to the implications of such a Statement owing to the reason that the audience comprises a heterogenous mixture of persons from different field. So there is every chance of “exact reporting” and hence risk of misinterpretation. She should have added a tag that “such thing is meant for industrial utility and not exemptable (say under section 3)in connection with public order/morality,method of agriculture (Indian context), diagonostic methods, living substance other than GMO, idea, information or Knowledge”. (If anyone argues further it is only because of the lack of common sense to interpret the fundamental concepts of “inventive step”, “novelty” and “industrial innovations”.)
But you cannot expect a Government Employee to be so skilled and shrewd in the art of Public address.
So let us “exonerate” this Examiner. Please don’t send her to “gallows” for this very small “crime”
The ET reporter has quoted the opinion incomplete,which is why these kind of silly things has popped up and we need to understand it completely and in context.
While motivationg young enterpreneurs to innovate and protect their inventions and making them understand scope of protection the patent Examiner said : “Anything and everything is patentable provided it is novel, inventive and have industry applicable and is not barred by section3 and section 4 of Indian patent Act.
Therefore this should not be a issue at all.
The examiner has been completelly misinterpreted.Infact i was there in the seminarand she never said like that.she in one of her slides had discussed “all processes and products that are new ,involvinginventive step,capable of industrial application and not barred by section 3 and 4 of PATENT ACT .”She did not quote the line wihich has been given in blog.it was said by some other speakerand not sweta rajkumar.Her presentation was brilliant .
The examiner has been completely misinterpreted.Infact i was there in the seminar and Ms. Sweta Rajkumar never said like that.she in one of her slides had discussed “all processes and products that are new ,involvinginventive step,capable of industrial application and not barred by section 3 and 4 of PATENT ACT .”She did not quote the line wihich has been given in blog.it was said by some other speaker and not Ms.Sweta Rajkumar.Her presentation was brilliant .
“Tne Examiner may have meant something and spoke something. Well,notwitstanding this, the quality of the Examiners at the Patent Offices is quite pathetic, only about 20% of them really understand the field.Even, Examiners with 4-6 years experience make alarmingly ridiculous statements. Some of the Controllers are no better. Anyone who does regular ‘prosecution’ of patent appliactions at the Patent Office(especially Delhi with maximum number of examiners) would be aware of this sad predicament.
Coming to this specific Examiner, she is one of the few who can speak ‘good english’, alas can’t say the same about her understanding)
The ET reporter has quoted the opinion incomplete,which is why these kind of silly things has popped up and we need to understand it completely and in context.
While motivationg young enterpreneurs to innovate and protect their inventions and making them understand scope of protection the patent Examiner said : “Anything and everything is patentable provided it is novel, inventive and have industry applicable and is not barred by section3 and section 4 of Indian patent Act.
Therefore this should not be a issue at all.
The examiner has been completely misinterpreted.Infact i was there in the seminar and Ms. Sweta Rajkumar never said like that.she in one of her slides had discussed “all processes and products that are new ,involvinginventive step,capable of industrial application and not barred by section 3 and 4 of PATENT ACT .”She did not quote the line wihich has been given in blog.it was said by some other speaker and not Ms.Sweta Rajkumar.Her presentation was brilliant .
The examiner has been completely misinterpreted.Infact i was there in the seminar and Ms. Sweta Rajkumar never said like that.she in one of her slides had discussed “all processes and products that are new ,involvinginventive step,capable of industrial application and not barred by section 3 and 4 of PATENT ACT .”She did not quote the line wihich has been given in blog.it was said by some other speaker and not Ms.Sweta Rajkumar.Her presentation was brilliant .
Turning “Chinta” into “Chita” is what happens when someone is not attentive while listening. That’s why atleast a certificate course on common sense, attentiveness and understanding should be made mandatory for the people who are expected to carry the “burden” of projecting the immaculate image of India and its servants.
I attended the Seminar and the reported statement was definitely made. However, I think the ET reporter mixed up the names as the statement was made by Omvir rather than Sweta. Not stopping there, Omvir also surprised us all when he started discussing pending Patent applications…
Kudoes to IP system in India. And Congratulations!!! to all applicants and inventors. They can take advantage of the liberal system in Delhi Patent office where it seems that section 3 of the Indian Patent Act is not applicable.
SRK
Talking about the three major requisites for patentability, she said: “Anything and everything on this earth is patentable provided it is novel, inventive and industry applicable.”
that is from report of Economic Times . It seems that speaker from patent office refering the patent act 1970’s section 2(1)(j). In addition to this section 3 and 4 of patent 1970 does not allow inventions which are not patentable . section 3 and 4 deals with non patentability . now see the ambigity created by Pallavee Dhaundiyal Panthry the reporter , mixed the matter of patentability with subject matter not patentable . it is very obvious that the examiner has taken section 3 and 4 in her lecture later.
I disagree with your assertion that “By mandating that a new form without increased efficacy would not amount to an “invention,” section 3(d), in effect, constitutes a patent eligibility standard.” That is, unless the words “in effect” are given the greatest emphasis.
Section 3(d) “in effect” creates a statutory proviso to the general rules of patent “eligibility” set forth in Section 2. The closest statutory analog to 35 USC Section 101 in the Indian Patent Act is the definition of “invention” in Section 2, which appears to coexist with the definition of “new invention” added in 2005. The entirety of Section 3 is a mixture, in my view, of items that are declared not eligble for patents, with legislative declarations, such as 3(d) of subject matter that may well be obvious. There is no parallel in US law, except in judicial decisions. The use of the words “mere discovery” in Section 3(d), though not a central focus of court decisions or academic debate, is critical. If, as I suggest, 3(d) is a proviso to Section 2, the burden would be placed on those asserting its application (e.g., a patent examiner or a litigant in patent infringement litigation), rather than on the patent applicant.
This, I suggest, would be a salutary result, but would be entirely contrary to the holdings of courts that have thus far applied 3(d). In my opinion, as a distant observer, those decisions have erroneously construed the language and history of 3(d), whatever one may think of the actual results of those decisions. It would be useful, in my view, if the Indian Supreme Court spoke on the subject. I’d love to attend that argument!
Dear Chris,
I am completely in agreement with you that section 3(d) is better seen as a patentability (non obviousness) standard. Unfortunately, under the current structure of the aptents, act, it is stated explicitiy as a patent elgiviity standrd. Therefore, unless we have some sort of an amendment , the patent office is constrained to view this as an eligibility standard. And given the political dynamics around pharma patents, I doubt very much if the Suprem Court will change that. In a previous post, I noted:
By mandating that a new form without increased efficacy would not amount to an “invention,” section 3(d), in effect, constitutes a patent eligibility standard. Although this is more a matter of form than substance and is not likely to make an impact on the outcome of the case, it will influence the stage at which the examination is conducted. Being a patent eligibility standard, an examination is conducted right at the start. Compare this with a non-obviousness or inventive step examination, which is done at a later stage. Since an examination under section 3(d) is likely to call into question some of the very same issues used in a non-obviousness determination, it may help to explicitly state section 3(d) as a “patentability” criterion rather than a patent eligibility criterion.”
Dear Shamnad,
I think there is misunderstanding about all these. We should clear
the doubt. As far as i understand with the patenting regulations, any
works of science are technology which has some innovation by the
inventor and also if it has commercial value as well non obviousness
in it can be patented. here it is interesting that the human
intervention well above the natural discoveries can also be patented
provided the steps have some innovative and non obviousness.
For example Tea making is an art, which is going on this earth from a
long time. There are benefits as well as side effects of this tea. One
of the main effect is it inhibits the body cells not to produce the
Harmon’s that cause sleepiness. The main thing it helps the thiosul
molecule not to form, which is major stress reliver. This ingredient,
which inhibits thiosul molecule, in the tea can be isolated and given
to the people who smoke or to those who are exposed to volatile gases
that contain thiosule molecule. The entire process is innovative as
well as good benefits also. As such excess of tea consuption creates
acidity to counter it we add some spices to that as well as milk,
which suppresses some of the side effects.
This entire new process as well as product can be patented, even
though some them are known as nobody has attempted this kind of work.
with warm regards
dbheemeswar.
dear shamnad,
I think there is misunderstanding about all these. We should clear
the doubt. As far as i understand with the patenting regulations, any
works of science are technology which has some innovation by the
inventor and also if it has commercial value as well non obviousness
in it can be patented. here it is interesting that the human
intervention well above the natural discoveries can also be patented
provided the steps have some innovative and non obviousness.
For example Tea making is an art, which is going on this earth from a
long time. There are benefits as well as side effects of this tea. One
of the main effect is it inhibits the body cells not to produce the
Harmon’s that cause sleepiness. The main thing it helps the thiosul
molecule not to form, which is major stress reliver. This ingredient,
which inhibits thiosul molecule, in the tea can be isolated and given
to the people who smoke or to those who are exposed to volatile gases
that contain thiosule molecule. The entire process is innovative as
well as good benefits also. As such excess of tea consuption creates
acidity to counter it we add some spices to that as well as milk,
which suppresses some of the side effects.
This entire new process as well as product can be patented, even
though some them are known as nobody has attempted this kind of work.
with warm regards
dbheemeswar.
This is only because of the mess created by people who do not know what are patenting procedures. The patentability is applicable under this sun provided if there is any innovative steps in producing the product or process or both. I also think this mess may be because of the time taken by our Patent offices to grant a patent. Also there may be lack of eduction about patenting pocedures.
Thanks for all your comments. Please see our recent post, where we reproduce a letter written by the Times Group, which clearly indicates that the statement was indeed made, albeit by a different examiner from the same patent office. http://spicyipindia.blogspot.com/2008/07/patent-examiner-blooper-times-group.html
Isn’t depending on the US too much hazardous for our patent system? Sure, they are more experienced in dealing with IPR, but I’m afraid that we would blindly import all their rules + processes, which would also include the cruft that is clogging their system.
What do you think?