Dinkar Vidyarthi (Advocate) 10 October 2008

Basic Requirements for patentability

Dear Sir,

What are the basic requirements for Pantentability? Define also ' an inventive step'?

thanks

with Regards

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2 Replies

Senthil Kumar (Patent Consultant) 10 October 2008

The basic requirement for patentability are

i) Novel: The invention disclosed in the specification is not published in India or elsewhere before the date of filing of the patent application in India.

ii) Inventive: The invention is not obvious to a person skilled in the art in the light of the prior publication/knowledge/ document.

iii) Industrially applicable: Invention should possess utility, so that it can be made or used in the industry.

To learn more, visit

https://indiapatents.blogspot.com/2008/10/how-to-file-patent-in-india.html

https://www.iusmentis.com/patents/crashcourse/requirements/

Best Regards

Senthil

Shree. ( Advocate.) 10 October 2008

Dear Dinkar Vidyarthi,

There are four basic requirements for patentability:

There must be an

"invention"

.

The invention must be

"susceptible of industrial application"

.

The invention must be

"new"

.

The invention must involve an

"inventive step"

.

These requirements will be dealt with in turn in IV, 2 and 3,4,5 to 8 and 9 respectively.

2. [Implicit Requirements]

In addition to these four basic requirements, the examiner should be aware of the following two requirements that are implicitely contained in the Convention and in the Regulations:

The invention must be such that it can be carried out by a person skilled in the art (after proper instruction by the application); this follows from Article 83. Instances where the invention fails to satisfy this requirement are given in II, 4.11.

The invention must be of "technical character" to the extent that it must relate to a technical field (Rule 27, paragraph 1b), must be concerned with a technical problem, and must have technical features in terms of which the matter for which protection is sought can be defined in the claim (see III, 2.1). This requirement of "technical character" may be decisive in determining whether or not an invention is excluded from patentability under Article 52, paragraphs 2 and 4 and Article 53, sub-paragraph (b).

3. [No Requirement of Progressiveness or Usefulness]

The Convention does not require explicitly or implicitly that an invention to be patentable must entail some technical progress or even any useful effect. Nevertheless, advantageous effects, if any, with respect to the state of the art should be stated in the description, and any such effects are often important in determining "inventive step"

According to Patents (Amendment) Ordinance, 2004, Inventive Step means,

Section 2 (ja) “Inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;

· New definition “New invention” means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art.