India’s IP Office published the final Manual of Patent Practice and Procedure on March 25, three years after a draft was first circulated for comment.
“They have just put the Act and the Rules together – we were waiting for certain guidelines,” said Ranjna Mehta-Dutt, a partner of Remfry & Sagar in Gurgaon.
Although praising the greater accessibility of the Manual, which is available in HTML and PDF formats, practitioners are disappointed not to have more clarity over the assessment of inventive step and unity of invention, the applications of the exceptions to patentability and the working pre-grant opposition process.
On inventive step, the manual states: “’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.”
Mehta-Dutt contrasted this with more extensive EPO guidelines on its problem-solution approach: “There are no detailed guidelines here on how examiners will assess inventive step”.
On unity of invention, Sanjay Kumar, a partner of Lakshmi Kumaran & Sridharan, gave cautious praise for the use of eight examples in the manual of how claims in different categories may relate to a single inventive concept: “These may be helpful, but these should not be used as limiting examples.”
Section 3 of India’s Patent Act lists a series of exceptions to patentability. These include Section 3(d), which states that “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” is not patentable.
The Manual quotes from a 2007 Madras High Court decision in the long-running battle Novartis has waged to patent its anti-cancer blockbuster drug Glivec. That decision restricts the definition of efficacy to therapeutic efficacy, which pharmaceutical companies believe is too restrictive.
Patent practitioners had advised the Patent Office not to quote from this decision as the Madras decision has been appealed to the Supreme Court, which is due to hear the case later this month. Patent owners are worried that it might take too long to update the Manual to reflect any new definition produced by the Supreme Court.
Section 3(k) of the Patents Act excludes software programmes “per se” from patentability. Three years ago the circulations of the draft manual led to protests from campaigners for open source software, who felt this was being interpreted too loosely. This section has now been substantially revised.
Under Section 3(k) mathematical methods, business methods, computer programmes per se and algorithms are not considered patentable.
An algorithm is defined in the manual as “a set of rules or procedures or any sequence of steps or any method expressed by way of a finite list of defined instructions, whether for solving a problem or otherwise”.
Gabriel said that this definition is too broad: “Saying that an algorithm is a step-by-step method means that it could apply to mechanical inventions.”
The manual goes on to further restrict how per se can be defined: “Claims directed at ‘computer programme products’ are computer programmes per se stored in a computer readable medium and as such are not allowable”.
Patent applicants in India also face the problem of the patent system allowing both pre- and post-grant oppositions. At present, pre-grant oppositions can be filed at any time between filing and grant and the opposer does not need to show any material interest in the patent or pay a fee.
This has led to serial oppositions, particularly against pharmaceutical patents. Mehta-Dutt had been hoping for more clarity: ‘There are no clear guidelines as to how examiners will handle pre-grant oppositions,” she said.
Gabriel said that such pre-grant oppositions should be restricted to a three- or four- month window after publication, but that this change should be made through amendments to the Patents Act in Parliament, not in the Manual.
The Office of the Controller General of Patents, Designs and Trade Marks has also published the final version of its Manual of Designs Practice and Procedure. Comments can still be submitted on a draft GI Manual.
