The Vendibility Test

1The vendibility test is applied to determine whether a process of manufacture can be subject matter of a patent. The test requires three conditions to be satisfied. First, the invention should result in the production of some vendible product. Secondly, it should improve or restore the former condition of a vendible product. Thirdly, it should have the effect of preserving from deterioration some vendible product to which it is applied. (GEC’s Application (1943) 60 RPC 1. This later came to be known as the Morton’s rule as it was propounded for the first time by Morton J in the above case.) The Morton’s rule, as these tests came to be known, strongly influenced judicial decision since its articulation in Re GEC’s Application. (Pharmaceutical Management Agency Ltd v The Commr of Patents (2000) RPC 857 (CA) (NZ).) But the rule was not applied in the NRDC’s Application where the Australian High Court rejected the focus on the production, improvement, preservation or restoration of a ‘vendible product’ as a requirement for an invention. (NRDC’s Application (1963) RPC 135 (HC)(Aus) followed by the Court of Appeal in Ciba-Geigy AG (Dürr’s) Applications (1977) RPC 83, p 88 (CA). In NRDC’s Application, the court held that a method of eradicating or controlling weeds from certain growing crops by applying a known herbicide toxic to weeds, but not to the crop, was held to be patentable.)

2The vendibility test is a yardstick to determine whether a process of manufacture would qualify for a new invention. In the case of a patent for a product, the end product will in itself amount to a manufacture, and thus there is no confusion as to whether it amounts to a manufacture. However, in the case of a patent for a process, the process would amount to a manufacture only if it results in the production of some tangible vendible product. A vendible product is a thing which may be passed on from one person to another upon the transaction of purchase and sale. (Dimminaco AG v Controller of Patents and Designs (2002) IPLR 255, p 268.) The term vendible should not be given a narrow or rigid construction by placing undue emphasis on the material requirements of what may otherwise be regarded as the outcome of a process of manufacture. (Rantzen’s Application (1947) 64 RPC 63, p 66. The case involved a claim for a method of transmitting and reading electrical signals. Justice Evershed held that the electric oscillations which were the subject of the transmissions were ‘vendible products’ and, therefore, capable of being the subject of a manner of manufacture.)

3In Dimminaco v Controller of Patents and Designs (2002) the Calcutta High Court held that “The said vendibility test is satisfied if the invention results in the production of some vendible item or it improves or restores former conditions of a vendible item or its effect is the preservation and prevention form deterioration of some vendible product. In other words, a vendible product means something which can be passed on from one man to another upon the transactions of purchase and sale.” (p 268) It held that “The dictionary meaning of the word manufacture does not exclude the process of preparing a vendible commodity which contains a living substance”, and that “Since the claim process for patent leads to a vendible product, it is certainly a substance after going through the process of manufacture.” (p 269)

4The object of the vendibility test is to exclude those processes which do not offer any patent protection under the Patents Act. Thus, methods or processes of treating human diseases will not qualify for a process patent." (Patents Act 1970, s 3(i). See also Wellcome Foundation Ltd (Hitching’s) Application (1980) RPC 305 (SC) (NZ).) “There exists a difference between treatment of diseases affecting human beings and treatment that will produce a result in the human body for which people pay a price.” (For the patentability of a cosmetic result vis-à-vis a curative result, see Wellcome Foundation Ltd (Hitching’s) Application (1980) RPC 305 (NZ) (SC); Rantzen’s Application (1947) 64 RPC 63, p 66.) In Natera v Assistant Controller of Patents and Designs (2025) and Sequenom v Controller of Patents (2025), the Delhi High Court held that “The definition of invention under the 1911 Act required the existence of a novel method of manufacture. Hence, it is clear that processes or methods which are medicinal, surgical, curative, prophylactic, therapeutic would have been automatically excluded under the 1911 Act” (para 65), and that the exclusion “has to, therefore, be interpreted in the context of the evolved definition of invention” (para 70).

5In EMD Millipore v Assistant Controller of Patents and Designs (2025) the Delhi High Court recorded that “Section 3(i) or any other similar provision did not exist in the Patents and Designs Act, 1911” (para 51), and that such processes “did not involve any manufacture and hence, were obviously non-patentable” (para 52). It held that “Presently, in India, both products or new processes are patentable so long as they are novel, inventive and are capable of industrial application. The exclusion of methods/processes under Section 3(i) of the Act has to be, therefore, construed along with Section 2(1)(j) and 2(1)(ja) which define ‘invention’ and ‘inventive step’, respectively.” (para 57) On the line between treatment and cosmetic procedures, it held that “the manner in which processes which involve physical intervention in the patient’s body, must be performed by trained medical professionals, fall within the scope of the exclusion, whereas novel methods for performing cosmetic procedures such as a hair removal technique may not” (para 60). The exclusion itself is treated in Methods of Medical Treatment.