Category: Patents

ISSUE:

Whether there exists a bar to the patentability of a process of manufacturing when the process consists of a living organism?

Whether such processes qualify under Section 2 and Section 5 of the Patent Act 1970?

RULE:

The Vendibility Test is a technique in order to measure the patentability of an invention. The test measures to what extent and how the process of the claimed invention leads to improvement, preservation, or restoration of the product, and if the product in the due time of the manufacturing process serves any of those purposes, the test is passed through.

ISSUE:

Whether the Respondents’ living micro-organism constitute as a “manufacture” or “composition of matter” within the meaning of § 101 of Title 35 United States Code?

RULE:

35 U.S.C. 101 requires that whoever invents or discovers an eligible invention must have it patented and must be granted only one patent for the same. This prevents unnecessary patenting of inventions thereafter.

ISSUE:

Do patentable claims become invalid because they include mathematical formulas?

RULE:

The ability to regulate a physical process through the use of a computer programme does not prevent the invention from being patented as a whole.

The abstract mathematical concepts could not be patented, but it held that the mere presence of a software element did not make an otherwise patent-eligible machine or process patent ineligible.

ISSUE:

Whether delayed/absent communications between the Applicant and the Patentee could be considered an irregularity in due procedure?

RULE:

In considering the application field under Section 84(6)(iv) of the Patents Act 1970, the Controller shall consider as to whether the applicant has made efforts to obtain a licence from the patentee on reasonable terms and conditions and such efforts have not been successful within a reasonable period as the Controller may deem fit.

Additionally, section 61 of the Competition Act 2002, provides for exclusion of jurisdiction of civil courts which states that no civil court shall have jurisdiction to entertain any suit or proceeding in respect of any matter which the is empowered by or under this Act to determine and no injunction shall be granted by any court or other authority in respect of any action taken or to be taken in pursuance of any power conferred by or under this Act.

ISSUE:

Whether the Plaintiff’s invention involved an inventive step in regard to what was previously known or used prior to the date of the patent?

RULE:

The principle of prior art, which began in the 1950s, states that all claimed inventions can only be granted patents given that they pass a test of innovation. Claimed inventions are only presumed to be patentable unless and until the examiner establishes a prima facie evidence that the invention consists of obviousness and knowledge prior to that of the said claim.

ISSUE:

Whether the machine-or-transformation test is the only test for patent eligibility under § 101 of the Patent Act?
Whether the Federal Circuit erred in applying the machine-or-transformation test?

RULE:

The machine-or-transformation test is a doctrine requiring an invention to be tied to a machine or an apparatus, following which the invention must transform an article from one state to the other.

ISSUE:

Whether claims regarding computer implemented inventions, including claims to systems and machines, processes, and items of manufacture, are directed to patent-eligible subject matter?

RULE:

35 United States Code, Section 101 requires that whoever invents or discovers an eligible invention must have it patented and must be granted only one patent for the same. This prevents unnecessary patenting of inventions thereafter.

ISSUE:

Whether a compulsory license can be granted in favour of Natco for the production of the patented drug?

RULE:

Section 84(1) of the Patents Act allows any interested person to make an application to the Controller for the grant of Compulsory License after the expiry of three years from the date of grant of patent on any of the following grounds:

a) That the reasonable requirements of the public with respect to the patented invention have not been satisfied

b) That the patented invention is not available to the public at a reasonably affordable price

c) That the patented invention does not work in India.

ISSUE:

Whether isolated DNA sequences, which are human genes, patent eligible under Section 101 of the Patent Act?

Whether Myriad’s claimed invention BRCA 1 BRCA 2 and BRCA cDNA, the sequence of certain human genes in both isolated and purified forms, fall within the scope of inventions for which a patent may be granted?

Whether the product patents obtained by Myriad Laboratories on the discovery of genes, BRCA 1 and BRCA 2, and BRCA cDNA, on the human genome are valid under the provisions of 35 U. S. Code §101 and in consonance with the relevant jurisprudence on the matter?

RULE:

35 U. S. Code §101: “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 therefor, subject to the conditions and requirements of this title.”