Industrial Application and 'Manner of Manufacture'

1The term ‘manufacture’ does not figure in the definition of invention anymore, and as such the fact that something could be considered to be ‘a manner of manufacture’ does not necessarily mean that it satisfies the conditions specified in s 2 (1)(j). As the term ‘manufacture’ has been omitted from the definition of invention in the Patents Act, ’the dictionary meaning of this word or the meaning attributed to in a particular trade or business must be accepted if the end product is a commercial entity’. (Dimminaco AG v Controller of Patents and Designs (2002) IPLR 255, p 268. The invention in this case pertained to the process for preparation of infectious Bursitis Vaccine which is invented for protecting poultry against infectious bursitis.)

2The term ‘manufacture’ has not been defined under the Patents Act. Where there is no statutory definition, the ordinary meaning must be accepted. The dictionary meaning of the term ‘manufacture’ does not exclude the process of preparing a vendible commodity which contains a living substance. (Dimminaco AG v Controller of Patents and Designs (2002) IPLR 255, p 269.) Apart from the interpretations of the term ‘manufacture’ under the old provisions, the term is also defined in other statutes which may throw some light on how the term is to be interpreted. Manufacture in relation to any drug or cosmetic includes any process or part of a process for making, altering, ornamenting, finishing, packing, labelling, breaking up or otherwise treating or adopting any drug or cosmetic with a view to its sale and distribution, but does not include the compounding or dispensing of any drug, or the packing of any drug or cosmetic, in the ordinary course of retail business. (Drugs and Cosmetics Act 1940, s 3(f).)

3Manufacture may mean the manufacture of a product or a manufacturing process. It generally denotes either the manufacture of a vendible article or a new process to be carried on by known implements or elements acting upon known substances, and ultimately producing some other known substance, but producing it cheaper or in a more expeditious manner, or of a better or more useful kind. (R v Wheeler (1819) 2 B & Ald 345, p 349 cited in Bombay Aggrawal Co, Akola v Ramchand Diwanchand AIR 1953 Nag 154, p 162 (DB).) Manufacture includes improvements in manufacture and changes in the method by which an article is manufactured. (Press Metal Corpn Ltd v Noshir Sorabji Pochkhanawalla AIR 1983 Bom 144, (1982) PTC 259. In this case, the invention related to an ‘improvement in or relating to mufflers or exhaust silencers for internal combustion engines.’) Manufacture denotes a thing made which is useful for its own sake and vendible as such. It includes an engine or instrument to be employed either in the making of some previously known article or a new process to be carried on by known implements or elements. (R v Wheeler (1819) 2 B & Ald 345 cited in Dimminaco AG v Controller of Patents and Designs (2002) IPLR 255, p 269.)

4Generally a process of manufacture is considered to be new if it results in a new product or it uses new starting materials or it employs a novel combination of steps even if such steps themselves may not be per se novel. (Catalysts & Chemicals India (West Asia) Ltd v Imperial Chemical Industries Ltd (1976) IPLR 84, p 91.) A ‘process of manufacture’ is independent of the substance produced by the manufacture. It has a distinct identity of its own. It is thus possible for a patent to be claimed in respect only of a new process of manufacture. (Thomson Brandt v Controller of Patents AIR 1989 Del 249.) “Whether a process of manufacture involves novelty and an inventive step so as to qualify as an invention would thus be a mixed question of law and fact and would depend mainly upon the circumstances of each case. No uniform tests can be laid down to determine it. (Ibid.) Certain tests have nonetheless been laid down to determine whether the said process formed a part of prior art or whether the said process was anticipated by publication before the claim of patent was made. If the results of these tests are negative, then the said process would be novel and amount to an invention.

5Methods or processes of manufacture can qualify for a patent if they satisfy the conditions for patentability. Where the Controller had rejected an application for the process for opacifying a gaseous medium on the ground that the cloud created by the process was not tangible or lacked definiteness and denied the grant of a patent, the Delhi High Court rejected the findings of the Controller and remanded the application. (Thomson Brandt v Controller of Patents AIR 1989 Del 249.)

6The concept of manufacture was tied up with the utility of the product or process. Under the earlier definition, to qualify for a patent it must be shown that the invention is a new manufacture and that it is also useful. Under the 1911 Act, lack of utility was a ground for revocation of a patent. (Patents and Designs Act 1911, s 26(1)(f).) Though the term ‘useful’ does not figure in the definition of invention under the Patents Act, a patent may be revoked if it is not useful. (Patents Act 1970, s 64(1)(g).)

7‘Manner of manufacture’ includes both process of manufacture and the product which results from such manufacture. Though the definition under the 1911 Act which defined an invention as ‘any manner of new manufacture’ has now been replaced by the 1970 Act, the manner in which the courts have interpreted the phrase ‘manner of manufacture’ would still be relevant in understanding the development of law in the light of rapid scientific and technological advancements. The courts in the Commonwealth have held that the phrase ‘manner of manufacture’ must be interpreted in relation to a modern world’s ever expanding and increasing knowledge of science and technology. (Swift & Co v Commr of Patents [1960] NZLR 775, p 781 (SC) (NZ). For an elaborate account on the judicial interpretation of the phrase, see The Wellcome Foundation Limited (Hitching’s) Application (1980) RPC 305, pp 318-320 (SC) (NZ).) Remarkably, the concept of ‘manner of new manufacture’ served as the basis for the patent law through British law countries accommodating the advances in technology from 1623 without the need for legislative intervention. (Pharmaceutical Management Agency Ltd v The Commr of Patents (2000) RPC 857 (CA) (NZ).)

8In determining whether an invention sought to be patented involves a ‘manner of manufacture’, the courts have devised a test known as the ‘vendibility test’. The interpretation of the term ‘manufacture’ will depend on whether the manufacture results in a vendible or a sellable product.

9At one point of time, intellectual property was also known as industrial property. (See Paris Convention for the Protection of Industrial Property 1883, art 1(3), which states ‘Industrial property shall be understood in the broadest sense and shall apply not only to industry and commerce proper, but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers, and flour.’) Industry or trade was the area in which intellectual property could be applied. (The acronym TRIPS, which stands for Trade Related Aspects of Intellectual Property Rights, illustrates the commercial value of intellectual property rights.) Similarly, ‘commercial application’ and ‘industrial application’ have been regarded as related terms, and have been used alternatively. The term ‘industry’ should be given a wide interpretation. But, under the Patents Act, the term will not include a method of agricultural operation. (See Patents Act 1970, s 3(h).) In this aspect, the definition of the phrase ‘capable of industrial application’ under the Indian Act differs from its counterpart in the UK Act where the phrase includes agriculture. (UK Patents Act 1977, s 4(1).) “The UK Act as well as the EPC regards agricultural methods as methods which are susceptible of industrial application.” (T116/85 Wellcome/Pigs I [1988] EPOR 1 (Tech Bd App). The invention pertained to a method of control of ectoparasitic infestation comprising the application to a localised area of the pig’s body surface of a pesticidal composition comprising a pesticide admixed with an aliphatic hydrocarbon oil to substantially prevent systemic action of the pesticide. It was held that the method related to the treatment of animal body and was not patentable.) The term ‘industry’ shall be interpreted in the broadest sense to include agricultural industries as well. (See Paris Convention for the Protection of Industrial Property 1883, art 1(3).) Thus, there seems to be no express bar on inventions relating to agriculture save the limited restriction that a method of agriculture cannot amount to an invention under the Patents Act. (Patents Act 1970, s 3(h).) To qualify as an invention, the claim must be tied down to the industrial activity so that it becomes a valuable invention restricted to its proper sphere. (Halliburton Energy Services Inc v Smith International (North Sea) Ltd (2006) RPC 2, para 216.)

10With regard to the argument “that it is the commercial product alone for which a patent can be granted” (para 89), the Division Bench in Cipla v F Hoffmann-La Roche (2015) held, “This argument ignores the fundamental truth about breakthrough inventions, which at the time they are invented may not be commercially the most viable for immediate marketing. They are useful and are industrially applicable as without them there would be no stepping stone to achieve the next lot of improvements.” (para 90)

11In Merck Sharp and Dohme v Glenmark Pharmaceuticals (2015) the Division Bench held that “if the function of the compound is disclosed, and that function is useful in the medical industry, it is industrially applicable.” (para 69)