Improvements as Inventions

1It is normally expected that the patentee would specify in the specification the distinguishing features of his application which improve upon the existing level of knowledge and show how such an improvement will constitute an invention. The definition of the term ‘invention’ does not expressly include an improvement or a modification. (The definition of invention under the Indian Patents and Designs Act 1911 did include an improvement.) However, the Patents Act covers improvements that amount to a patentable invention. To qualify as an invention, an improvement must by itself satisfy the test of patentability. An improvement or modification of an earlier patent may qualify for a patent as a patent of addition. (Patents Act 1970, s 54.) ‘Improvement’ is not a term of art, and can have wider or narrower meanings according to context. (Buchanan v Alba Diagnostics Ltd (2004) RPC 34.)

2In the United Kingdom, improvement of industrial techniques was identified as one of the basic purposes of the patent system. (See ‘The Report of the Banks Committee on the British Patent System’, 1970.) A new product or a process could also mean a new improvement over an existing product or a process. Every improvement cannot qualify for a patent, but improvements on the prior art so long as it satisfies the prerequisites of patentability, can qualify as a patentable invention. Mere workshop improvements, devoid of ingenuity, will not qualify for a patent. (Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries AIR 1982 SC 1444, p 1453; Polar Industries Ltd v Jay Engineering Works Ltd (1989) PTC 2 Supp 310 (Cal).) But there appears to be no clear principle to differentiate a workshop improvement from a patentable improvement. (See Technograph Printed Circuits Ltd v Mills & Rockley Ltd (1972) RPC 346, p 355, [1971] FSR 188; Joseph Lucas (Batteries) Ltd v Gaedor Ltd (1978) RPC 297; Olin Mathieson Corp v Biorex Labs Ltd (1970) RPC 157.) The application of a known mechanism which had already been used for all practical purposes and the mere collection of more than one integer not involving the exercise of any inventive faculty do not qualify for the grant of a patent. (Polar Industries Ltd v Jay Engineering Works Ltd (1989) PTC 2 Supp 310 (Cal), (1991) IPLR 150.) A combination of known integers will qualify for a patent if it can be shown that the improvement was not hitherto known, and that such improvement was new and useful. (Gandhimati Appliances Ltd v L G Varadaraju (2000) 3 MLJ 85, pp 95-96 (DB).)

3Under the 1911 Act, as Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978) records, “Invention, means any manner of new manufacture and includes an improvement and an allied invention” (para 19). The Supreme Court held that “To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. The combination of old, known integers may be so combined that by their working inter-relation they produce a new process or improved result. Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent.” (para 21)

4Under the new definition of inventive step, the feature of an invention involving technical knowledge and economic significance can be regarded as secondary elements as the definition still requires the invention to be not obvious to a person skilled in the art, in addition to these elements. In Garware, the Bombay High Court equated the secondary elements of technical knowledge and economic significance as elements of inventive step itself. In Garware Wall Ropes v A.I. Chopra (2008) the Bombay High Court held that “In the first place application was filed by the appellant on 15.3.2001, while the amendment by Act No.38 of 2002 came into force w.e.f. 20.5.2003 and therefore, even new and useful improvement was included in the definition of invention.” The Court held that “involvement of technical advance as compared to the existing knowledge or having economic significance is an inventive step and consequently, even assuming that new and useful improvement was made in the Systems the same would be invention.” (para 16)

5Superior utility, comparative excellence, efficient production and qualitative improvement of the product should be taken into account in determining whether an improvement amounts to a patentable invention. In Shining Industries v Shri Krishna Industries (1974) the Allahabad High Court set out from Corpus Juris Secundum that “While a greater degree of control may be an improvement, such a change, in the absence of a performance of a new function, generally is not regarded as invention” (para 24), and held that “the mechanism used by Bodhraj Anand in the lock claimed to have been invented by him was known from before and that he adopted the same mechanism with slight changes and no appreciably different results.” (para 35)

6In Ravi Kamal Bali v Kala Tech (2008) the Bombay High Court held that “The rectangular box shape has no functional novelty. At the highest, if it was the Plaintiff’s product, there may have been a case for registering the same as a patent of addition. It certainly does not constitute a novel independent invention by itself, warranting the registration thereof as a main invention.” (para 26) The Court held that “if the features of the Defendants products were the work of the Plaintiff, it would have entitled the Plaintiff to a patent of addition in respect thereof vis-a-vis the Plaintiff’s main invention and not to independent patents in themselves” (para 29).

Who can apply for improvements

7The right to file a patent of addition rests with the owner of the main invention. The Court in Ravi Kamal Bali v Kala Tech (2008) held that “A stranger to the main invention cannot apply for a patent of addition in respect of any modification or improvement of the main intention” (para 34).