Subject of the Claim Not an Invention

1A patent may be revoked on the ground that the subject of any claim of the complete specification is not an invention within the meaning of the Patents Act. The above ground may be taken along with s 64(1)(k) which is on similar lines. Together, the provisions of ss 64(1)(d) and 64(1)(k) are similar to the grounds of opposition in ss 25(1)(f) and 25(2)(f) of the Patents Act. The above section is the same as s 32(1)(d) of the UK Patents Act 1949 in its substance. Section 72(1)(a) of the UK Patents Act 1977 also refers to revocation on a similar ground that ’the invention is not a patentable invention’. (UK Patents Act 1977, ss 1(1) and 72(1)(a).)

2The three prerequisites of an invention, ie, novelty, inventive step and industrial application contained in s 2(1)(j) should be satisfied for an invention to qualify for a patent under the Patents Act. If the invention does not satisfy the test laid down in s 2(1)(j), then it fails to qualify as an invention under the Patents Act and may be revoked under this ground. All the inventions mentioned in ss 3 and 4 of the Patents Act which relate to what are not inventions within the meaning of the Patents Act and to atomic inventions, may be revoked under this ground. The expression ‘invention within the meaning of the Act’ refers to a patentable invention.

3A patent may be revoked on the ground that the subject of any claim of the complete specification is not patentable under the Patents Act. This ground overlaps with the ground of revocation in s 64(1)(d). Together, the provisions of ss 64(1)(d) and 64(1)(k) are similar to the grounds of opposition in ss 25(1)(f) and 25(2)(f) of the Patents Act. Though there is no similar provision under the UK Patents Act 1949, s 32(1)(d) of the said Act which deals with what is ’not an invention’, would cover an objection on the ground of patentability. The above ground is a broad provision which along with s 64(1)(d) may be used to challenge a patent on the ground that it is not in conformity with the provisions of the Patents Act. What is not patentable under the Patents Act will also not be an invention within the meaning of the Patents Act. There is an obvious overlapping of the above two grounds and in practice, the above grounds have to be pleaded together.

4Inventions not patentable under the Patents Act, detailed in ss 3 and 4. The above section is a broad ground which, along with s 64(1)(d), may be used to revoke a patent on the ground that it is not in conformity with the provisions of the Patents Act.