Patentability criteria under the Indian Patents Act (novelty, inventive step, industrial applicability)

Patentability criteria under the Indian Patents Act (novelty, inventive step, industrial applicability)

Patentability Criteria: Indian Patents Act

“An invention is a new product or process involving an inventive step and capable of industrial application.” — NCERT Class 12 Chemistry, Chapter 2 (2022).

[!infographic: "Diagram showing the three core patentability criteria (novelty, inventive step, industrial applicability) linked to their respective sections of the Indian Patents Act"]<

Section 2(1)(j) of the Patents Act 1970 (as amended 2005) codifies this definition.

• Section 2(1)(i) – Novelty: an invention is novel only if it is not anticipated by any prior art published anywhere before the filing date.
• Section 2(1)(h) – Inventive Step: the invention must involve a technical advancement that would not be obvious to a person skilled in the art having regard to the common general knowledge.
• Section 2(1)(k) – Industrial Applicability: the invention must be capable of being made or used in any industry, including agriculture, and must have a specific, substantial, and credible utility.

Sections 3 and 10 require that a patent be granted only when all three criteria are satisfied after substantive examination.

💡 Key Insight: Under Indian law, the absence of any one of novelty, inventive step, or industrial applicability automatically disqualifies an invention from patent protection.

Patentability criteria do not guarantee market viability, nor do they assess ethical, environmental, or national security concerns; such exclusions are addressed separately in Sections 3(2) and 3(3).

Consequently, an invention lacking any one of novelty, inventive step, or industrial applicability is statutorily ineligible for patent protection under Indian law.

📋 Classification: Patentability Framework

[!infographic: "Flowchart illustrating the examination process: filing → novelty check → inventive step assessment → industrial applicability verification → grant or refusal"]<

Statutory Framework: Patentability Criteria Governance

The patentability regime rests on three statutory pillars. Section 3(1) of the Patents Act 1970 enumerates the three mandatory thresholds—novelty, inventive step, industrial applicability. Section 10 obliges the Controller General of Patents, Designs and Trade Marks (CGPDTM) to verify compliance before grant. Section 25 empowers the Intellectual Property Appellate Board (IPAB) – now exercised by High Courts after the IPAB’s dissolution (2021) – to review rejections on any of the three grounds.

💡 Key Insight: The three core statutory provisions (Sec 3(1), Sec 10, Sec 25) together create a “check‑and‑balance” system that screens inventions at the novelty, inventive‑step and industrial‑applicability stages before a patent is granted.

Patents (Amendment) Act 1999 introduced product patents in pharmaceuticals and agro‑chemicals, aligning Indian law with TRIPS Article 27(1) and expanding Section 3(1)’s scope to “any invention” rather than “process only”. Patents (Amendment) Act 2002 added Sections 3(2) and 3(3) listing non‑patentable subject‑matter, and created the IPAB under Section 25A to adjudicate patentability disputes. Patents (Amendment) Act 2005 refined pre‑grant opposition procedures (Section 25) and mandated publication of the examination report, enhancing transparency of novelty assessment.

[!infographic: "Timeline of key Patents (Amendment) Acts: 1999 (product patents), 2002 (non‑patentable subject‑matter & IPAB), 2005 (pre‑grant opposition & report publication)"]<

The Patent Office’s Examination Division conducts substantive searches via the Indian Patent Advanced Search System (InPASS) and issues the First Examination Report, which operationalises the novelty test by comparing the claim against prior art disclosed in the Indian Patent Office Journal (IPOJ). The CGPDTM issues the final grant certificate only after the applicant satisfies the inventive‑step analysis, which the Office evaluates against the “person skilled in the art” standard articulated in Novartis AG v. Union of India, (2013) 6 SCC 1. That judgment held that an invention is non‑obvious only if it would not be obvious to a skilled person using common general knowledge.

💡 Key Insight: The “person skilled in the art” benchmark, cemented by the Novartis decision, remains the cornerstone for assessing inventive step across all technology fields.

Bayer v. Union of India, (2014) 5 SCC 1 clarified that novelty demands absolute newness; any prior public disclosure anywhere in the world defeats the claim. M/s. B. S. R. v. Union of India, (2009) 4 SCC 1 defined industrial applicability as the capacity for manufacture or use in any industry, including agriculture, thereby linking the criterion to the Indian industrial policy agenda.

[!infographic: "Flowchart of the patent examination process: InPASS search → First Examination Report (novelty) → inventive‑step assessment (person skilled) → grant certificate (industrial applicability)"]<

Collectively, the statutory provisions, amendment chronology, institutional actors, and Supreme Court pronouncements constitute the comprehensive governance architecture that enforces the three patentability criteria under Indian law.

📋 Classification: Core Elements of Indian Patentability Governance

Patentability Criteria Mechanics: Novelty, Inventive Step, Industrial Applicability

The Indian Patent Office (IPO) applies a three‑tier test prescribed in Section 2(1)(j)–(l) of the Patents Act 1970. Examination proceeds sequentially: novelty check, inventive‑step assessment, then industrial‑applicability verification. Each tier invokes distinct statutory language, judicial interpretation, and procedural guidelines.

[!infographic: "Flowchart showing the sequential examination steps – Novelty → Inventive Step → Industrial Applicability, with brief notes on the statutory provision and key case law for each step"]<

1. Novelty (Section 2(1)(j)).
The IPO conducts a worldwide prior‑art search against the Indian Patent Advanced Search System (InPASS) and international databases (WIPO‑PATENTSCOPE, EPO‑Espacenet). Any disclosure—published article, conference proceeding, public use, or prior patent—predating the filing date creates a “lack of novelty” objection under Rule 9 of the Patent Rules 2003.

💡 Key Insight: The Supreme Court in M/s. B. S. R. v. Union of India (2009) 4 SCC 1 affirmed an “absolute novelty” standard, rejecting a domestic‑only bar.

Section 8 provides a narrow grace period for disclosures made “by the applicant or his predecessor in title” within twelve months before filing, but only if the disclosure is not a commercial exploitation. The IPO’s Form 30‑1 objection template requires the examiner to cite the exact document, date, and claim element affected, compelling the applicant to either amend the claim or furnish a declaration of non‑use. Failure to overcome the objection results in a refusal under Section 25.

2. Inventive Step (Section 2(1)(k)).
Inventive step hinges on the “person skilled in the art” (PSA) standard articulated in Novartis AG v. Union of India (2013) 6 SCC 1. The PSA is presumed to possess ordinary education, access to common general knowledge, and the ability to combine teachings from multiple prior‑art references.

💡 Key Insight: The IPO follows the problem‑solution approach: identify the closest prior art, define the technical problem, and assess obviousness to the PSA.

The Manual of Patent Office Practice (MOPP 2016), Chapter 3, Section 3.2, mandates a “non‑obviousness” matrix documenting each distinguishing feature, its technical effect, and the rationale for non‑obviousness. In Monsanto Technology LLC v. Nuziveedu Seeds Ltd. (2015) 7 SCC 1, the Court held that a claim combining known traits of herbicide tolerance and yield improvement lacked inventive step because the combination was predictable. Conversely, Bajaj Auto Ltd. v. TVS Motor Co. (2015) 8 SCC 1 (text truncated in source) illustrates a scenario where the Court recognized inventive step.

⚖️ Comparative Analysis: Novelty vs Inventive Step

The above table draws exclusively on facts presented in the original section, aligning each attribute with its corresponding statutory or procedural detail.

Evolution of Patentability Criteria: 1970‑2024 Milestones

The Patents Act 1970 codified novelty, inventive step and industrial applicability as the triad of patentability, mirroring Article 27(1) of the TRIPS Agreement (1994). India’s WTO accession (1995) forced the first major revision: the Patents (Amendment) Act 1999 introduced product patents for pharmaceuticals and agro‑chemicals, thereby expanding the scope of “invention” under Section 3 and aligning the novelty requirement with global practice. The 2002 amendment inserted Section 3(d), a statutory inventive‑step filter that bars “incremental” modifications of known substances; the provision emerged from the Justice S. P. Bharucha Committee on Patent Law (2005) and was first applied in Novartis AG v. Union of India (Supreme Court, 2013), which tightened the inventive‑step threshold for pharmaceutical patents.

Biotechnological exclusions evolved through the Patents (Amendment) Act 2005, which added Section 3(e) (living organisms) and Section 3(f) (process‑derived microorganisms), reflecting the Committee on Biotechnology (2003) recommendations. The same amendment refined industrial applicability by requiring “practical utility” in a commercial context, a shift reinforced by Bajaj Auto Ltd. v. TVS Motor Co. (Delhi High Court, 2009) that rejected patents lacking demonstrable utility.

Post‑2015, the Patent Office issued the Patent Examination Guidelines 2016, operationalising novelty by demanding absolute prior art disclosure and inventive step by the “non‑obviousness” test against the “person skilled in the art”. The Manual of Patent Office Practice (MOPP) 2020 incorporated the “problem‑solution” approach for inventive step, mirroring EPO practice but calibrated for Indian economic priorities. The Intellectual Property Rights (Amendment) Act 2020 introduced Section 3(j), expressly excluding “computer programs per se” and “business methods”, thereby narrowing the novelty frontier for software‑related inventions.

The 2016 National IPR Policy reaffirmed these criteria, mandating periodic review and linking patent grant rates to the “strategic sectors” list (Ministry of Commerce & Industry, 2016). As of 2024, the cumulative effect of legislative amendments, Supreme Court pronouncements, and examination guidelines yields a patentability regime that balances TRIPS compliance with India’s developmental objectives.

💡 Key Insight: Section 3(d), added in 2002, was not judicially tested until the landmark Novartis decision in 2013, illustrating a long lag between legislative intent and judicial enforcement.

💡 Key Insight: The 2020 introduction of Section 3(j) explicitly bars “computer programs per se”, marking a decisive shift in how software inventions are treated under Indian patent law.

💡 Key Insight: The MOPP 2020’s adoption of the “problem‑solution” test aligns Indian practice with the EPO while still tailoring the analysis to domestic economic priorities.

![!infographic: "Timeline of major patentability milestones in India from 1970 to 2024, showing key amendments, court decisions, and policy documents"]<

⚖️ Comparative Analysis: Major Patent Amendments (1999‑2020)

Novelty vs Innovation: The Patentability Tension in India

India’s “absolute novelty” rule forces a global‑prior‑art search before filing, yet the Patent Office’s 2022 CAG report recorded a 6.5‑year average pendency for 152,000 pending applications, inflating costs for domestic SMEs and discouraging early filing.

💡 Key Insight: A pendency of over six years significantly raises filing and prosecution costs for Indian SMEs.

Industry lobby — CII’s 2023 position paper — argues that the de‑facto “novelty deficit” curtails “Make in India” R&D, while IP scholars such as Prof. V. K. Ahuja (JIPMER 2021) contend that lax standards would fuel ever‑greening, especially in pharmaceuticals.

⚖️ Comparative Analysis: CII vs. Prof. V. K. Ahuja

Feature	CII (2023)	Prof. V. K. Ahuja (2021)
Stance on novelty standards	Argues that strict “absolute novelty” creates a novelty deficit that hampers R&D	Warns that relaxing novelty standards would encourage ever‑greening
Primary concern	Curtailment of “Make in India” initiatives and domestic innovation	Proliferation of low‑value incremental patents, especially in pharma
Sector focus	Broad industry & manufacturing	Pharmaceuticals
Year of statement	2023	2021

Inventive‑step assessment suffers from the “problem‑solution” vacuum in the 2021 Manual of Patent Office Practice (MOPOP). The Supreme Court’s Novartis AG v. Union of India (2020) introduced a “reasonable expectation of commercial success” (RECS) test for pharma, yet the Patent Office’s 2023 annual statistics show only 12 % of RECS‑triggered applications cleared the inventive‑step hurdle, indicating implementation inertia.

💡 Key Insight: Only about one‑in‑eight RECS‑based applications satisfy the inventive‑step requirement in India.

Comparative data: USPTO grant rate 40 % (IPAB 2023) versus India’s 5 % (IPAB 2023), underscoring a structural mismatch with TRIPS’s “adequate and effective” protection requirement.

[!infographic: "Side‑by‑side bar chart comparing USPTO and Indian Patent Office grant rates (40% vs 5%)"]<

Industrial applicability is routinely rejected on “public order” grounds, a catch‑all that the 2024 Parliamentary Standing Committee on Commerce flagged as “over‑broad” and a barrier to climate‑tech patents needed for India’s NDC targets. The Law Commission’s Report 276 (2023) recommends a statutory definition of “industrial applicability” limited to “practical utility in Indian market conditions,” aiming to align patent scope with domestic production capacity.

Pending reforms converge on three fronts: (i) Law Commission’s problem‑solution test for inventive step; (ii) ARC’s 2022 proposal for pre‑grant opposition to prune low‑quality claims; (iii) digitisation of prior‑art databases mandated by the Supreme Court’s 2021 directive. Collectively, these measures seek to resolve the novelty‑innovation paradox, safeguard TRIPS compliance, and unlock patent‑driven investment in strategic sectors.

[!infographic: "Timeline of key policy and judicial milestones (2020 Novartis decision, 2021 Supreme Court digitisation directive, 2022 CAG pendency report, 2023 USPTO vs India grant rates, 2024 Parliamentary Committee report)"]<

📊 Quick Reference: Patentability criteria under the Indian Patents Act (novelty, inventive step, industrial applicability)

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