Patentability of Integration Inventions in India

24 August 2012

With changing times, there is an increasing demand for products providing combined solutions, which may be in the form of an integrated device that serves more than one purpose. A modern cellular mobile phone, for example, may be a good example of such a multipurpose device that integrates the functions of a still camera, video camera, calculator, computer, organizer, personal assistant and the like. The protection of intellectual property involved in such an integration of devices or their functions may be sought by invention patents or design registration or both, as applicable.

One pertinent provision of Indian Patent Act impacting patentability of such inventions is Section 3(f). This section precludes from patentability those inventions that define a mere arrangement or rearrangement or duplication of known devices each functioning independently of one another. The said section may be better understood with the help of a few case laws.

In Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, the Patentee filed a suit for infringement against another utensil manufacturing firm for using, without authorization, his patented invention relating to the method of mounting the utensil which makes the process of making the utensil safer. The Defendant filed a revocation petition against the said patent on the grounds that the invention was a mere combination made by mere workshop improvement. The court stated that “an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement, and must independently satisfy the test of invention or an inventive step. It must produce a new result, or a new article or a better or cheaper article than before. The new subject matter must involve ‘invention’ over what is old. Mere collocation of more than one, integers or things, not involving the exercise of any inventive faculty does not qualify for the grant of a patent.”

The case may be understood with the help an example of a mere integration of speakers with a computer monitor. In this example, the computer monitor and speakers are combined while both working independently. There is no inventiveness in the combination as such. Therefore, the said combination is likely to to be rejected under Section 3(f).

In Lallubhai Chakubhai v. Chimanlal and Co, the court said a patentable combination is one in which the component elements are so combined as to produce a new result or arrive at an old result in a better or more expeditious or economical manner. If the result produced by the combination is either a new article or a better or cheaper article than before, the combination may afford subject matter of a Patent. Further, in Lallubhai Chakkubhai v. Shamaldas Sankalchand Shah similar observations were made.

The said case laws may be further elucidated with the example of a computer monitor having an automated brightness control according to the surrounding light. In this example, a light intensity sensor is coupled to the monitor. The brightness of the monitor changes per the changing light intensity of the surroundings. Both devices – the monitor and sensor – are so connected to provide a new result, and the combination may not fall under the scope of Section 3(f). Likewise, a vehicular wheel with an inflator that inflates the tyre upon manual activation may fall under purview of Section 3(f), since both the elements are working independently in said combination. The mere combining does not make the combination eligible for a patent as per Section 3(f), whereas if the combination had the capability to monitor air pressure in the tyre and to inflate the tyre as and when air pressure reduces, the combination may not fall under scope of Section 3(f).

In an another example, a writing pen is combined with a LED which the user may switch on to light up the surrounding area for writing in poor light. The combination may fall under Section 3(f) since both the elements, the pen and LED, are working independently. Whereas, if the combination is so-designed that it is able to sense the pressure in the writing tip and switch on the LED, the combination where the elements have some working interrelationship may not fall under Section 3(f). In this regard, the Manual for Patent Practice and Procedure published by Indian patent office mentions that “where the old integers when placed together have some working interrelation, producing a new or improved result, then there could be a patentable subject matter in the working interrelationship brought about by the collection of the integers.”

Thus the inventions where there is no interrelationship between the integers constituting a combination, whereby each of the integers performs its own function without having any effect on functions of other integers, may not be patentable under Section 3(f). Even if there is a working interrelationship, if the claims are not worded to recite such interrelationship, the claims may have to be amended to provide the interrelationship, otherwise the application may be rejected under said section. Applicants should provide sufficient teaching in the description for the interrelationship to enable such amendment of claims, if required. Care should be taken at the time of drafting the specification to provide sufficient information therein lest the application would be denied grant for its inability to meet the requirements of Section 3(f).

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