Patentability Criteria

Patentability criteria are the three legal tests every invention must pass before the Indian Patent Office can grant a patent. These criteria — novelty, inventive step, and industrial applicability — are defined in the Patents Act, 1970 and applied rigorously during examination. An invention that fails any one of them is refused.

For inventors, R&D teams, and startups, understanding these criteria before filing is the single most important step in patent strategy. A weak application that lacks novelty or inventive step wastes filing fees, examination fees, and months of prosecution time.

The three criteria

1. Novelty (Section 2(1)(j))

An invention is new if it has not been anticipated by prior publication, prior use, or prior public knowledge anywhere in the world before the priority date of the application.

Key aspects:

• Absolute novelty applies — the invention must not have been disclosed anywhere in the world, not just in India
• Prior art includes published documents, public use, oral descriptions, and any other form of disclosure that makes the invention available to the public
• The inventor’s own publication before filing destroys novelty
• Grace period: India does not have a general grace period (unlike the US, which has a 12-month grace period). Disclosure before filing is fatal

2. Inventive Step (Section 2(1)(ja))

An invention involves an inventive step if it is not obvious to a person skilled in the art, having regard to the prior art. This is the most subjective and most contested criterion.

The test is: would a hypothetical “person skilled in the art” — a technician or scientist with ordinary skill and knowledge in the relevant field — have found the invention obvious at the priority date?

Factors considered:

• The nature and complexity of the technical field
• The gap between the closest prior art and the claimed invention
• Whether the invention produces a surprising or unexpected technical effect
• Whether the invention solves a long-standing technical problem
• Commercial success (secondary evidence of non-obviousness)

3. Industrial Applicability (Section 2(1)(ac))

An invention must be capable of being made or used in an industry. This is the lowest bar of the three criteria. It means the invention must have a practical, reproducible application — not merely be a theoretical concept.

Requirements:

• The invention must be capable of being made or used in any kind of industry (including agriculture)
• The invention must be reproducible with the same result
• Mere discoveries, scientific principles, or abstract theories do not qualify

What is not an invention — Section 3 exclusions

Even if an invention passes the three criteria, it may still be barred under Section 3 of the Patents Act. Key exclusions include:

Section 3(d) — the “evergreening” bar

Section 3(d) is the most litigated exclusion. It prevents patenting of:

• The mere discovery of a new form of a known substance
• The mere discovery of any new property or new use for a known substance
• The mere use of a known process, machine or apparatus

Unless the applicant demonstrates enhanced efficacy compared to the known substance.

This provision was the basis for the landmark Novartis v. Union of India decision, where the Supreme Court held that the beta-crystalline form of imatinib mesylate did not show enhanced efficacy over the known amorphous form and was therefore not patentable.

The examination process

During examination, the Controller applies the three criteria systematically:

1. Novelty search — the Controller searches patent databases, technical journals, and other prior art
2. Inventive step analysis — the Controller assesses whether the claimed invention is obvious over the closest prior art
3. Industrial applicability check — the Controller verifies the invention has a practical use
4. Section 3 exclusions — the Controller checks whether the invention falls within any excluded category

If objections are raised, the applicant has an opportunity to respond through written submissions and, if requested, a hearing.

Common misconceptions

“My invention is new because no one in India is doing it”

False. Novelty is assessed on a worldwide basis. Prior publication or use anywhere in the world destroys novelty.

“A small improvement is enough for inventive step”

Not necessarily. The improvement must be non-obvious to a person skilled in the art. Routine optimisation or trial-and-error modifications rarely qualify.

“Software can be patented in India”

Only in limited circumstances. Section 3(k) excludes computer programmes per se. However, software that produces a technical effect — such as improving hardware performance, reducing network load, or enhancing data security — may be patentable if framed as a technical solution to a technical problem.

“I have 12 months after public disclosure to file in India”

False. India does not have a general grace period. Once you disclose your invention publicly, you generally lose the right to a patent. The only limited exception is for disclosures at recognised international exhibitions under Section 31.

“Natural products cannot be patented”

Correct in principle but nuanced under Section 3(c). Mere discovery of a naturally occurring substance is not patentable. However, an isolated, purified, or modified form of a natural product that demonstrates a new technical effect may qualify.

Frequently raised questions

How do I check if my invention is novel?

Conduct a prior art search before filing. This involves searching patent databases (IP India, USPTO, EPO, WIPO), technical journals, conference proceedings, and other publications. A professional patent search by a registered patent agent significantly improves filing quality.

What is the “person skilled in the art”?

A hypothetical person with ordinary skill and knowledge in the relevant technical field, but without inventive capacity. The standard varies by field — higher for mature technologies, lower for emerging fields.

Can a combination of known features be patented?

Yes, if the combination produces a synergistic effect that is not merely the sum of the individual features. The combination must solve a technical problem in a non-obvious way.

Does commercial success prove inventive step?

Commercial success is secondary evidence of inventive step. It is persuasive but not conclusive. The primary test remains whether the invention was obvious at the priority date.

How long does examination take?

After filing a request for examination (RFE), examination typically takes 12-24 months. Expedited examination is available for startups, small entities, and applicants who are natural persons, with a target timeline of approximately 3-6 months.

Related entries

• Patent Specification (Provisional vs Complete) — drafting the patent application
• Trademark Opposition Notice — defending brand rights
• See practice area: Intellectual Property