Inventions related to atomic energy are scrutinised for patentability under Section 4 of the Patents Act, 1970.
According to Section 4 of the Patents Act, 1970, “inventions relating to atomic energy” defined under Section 20 of the Atomic Energy Act (AE Act), 1962, are “not patentable”.
It is important to consider Section 20 of AE Act while analysing the impact of Section 4 on inventions which are related to atomic energy. According to this section, patents are not granted for those inventions which the Government of India (GoI) considers to be related to the control, production, disposal or usage of atomic energy or prospecting, extraction, mining, physical and chemical treatment, production, fabrication, canning or using any prescribed substance or radioactive substance or the insuring of safety in atomic energy operation. This act is meant to ensure safety in atomic energy operations in India.
To elaborate, if an invention comprises a nuclear material which is either a radioactive or prescribed substance as specified in the notification by Department of Atomic Energy (DAE) and if its amount is more than the prescribed limit, it will be considered non-patentable under Section 4 of Patents Act, 1970.
Section 2(1)(g) of the AE Act has provided a clear definition of “prescribed substance.” These are substances or minerals which in the Central Government’s opinion may be used for production, research or usage of atomic energy.
The list of prescribed substances includes:
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- Uranium
- Thorium
- Deuterium
- Plutonium
- Beryllium
- Derivatives, compounds or materials containing these aforementioned substances
Section 2(1)(i) of the AE Act defines radioactive substances as a material or substance which spontaneously emits more radiation than the levels prescribed by Central Government’s notification.
The updated list of “prescribed substances” under AE Act, published vide notification dated 28th April 2016 is linked here.
Any patent application for inventions utilising radioactive material is forwarded by Indian Patent Office (IPO) to DAE for direction under sub-section (1) of section 20 of AE Act read in connection with Section 4 of the Patents Act, 1970. However, there have been instances where IPO has challenged the patentability, under Section 4 of the Patents Act, 1970 for even those inventions which comprise such radioactive material either in minimum quantity or serve as a catalyst or a component in pharmaceutical composition. For example, the referral of an invention to DAE by IPO which related to a composition for mixed metal oxide catalysts for use in hydrocarbon conversion process was uncalled for and led to delay in grant of patent. In another instance, IPO referred to DAE a patent application pertaining to synthesis of superparamagnetic iron oxide nanoparticles utilised for MRI imaging which again stalled its prosecution.
Procedures followed by IPO and DAE for assessing an invention under Section 4 of the Patents Act, 1970 often lead to significant delays in grant of an application thereby reducing the enforceable term of a patent. Further, there remains no room for appeal if these applications eventually get rejected under Section 4 of the Patents Act, 1970.
However, a recent judgement by Bombay High Court directed IPO to provide a reasoned order instead of a blanket dismissal of application under Section 4 of the Patents Act, 1970.
Judgement of the Bombay High Court Regarding Patentability of Inventions Related to Atomic Energy
A two-judge bench of the Bombay High Court passed a decision in Ceres Intellectual Property Company Limited v/s. The Controller of Patents, Trademarks & Designs & 2 Ors. (W.P. No. 2257 of 2018). Bombay High Court, while setting aside an order, directed IPO to reconsider the application on merit according to law. The Court stated that the Controller cannot refuse a patent application falling under the “scope of Section 20(1) of Atomic Energy Act merely based on directions from the Department of Atomic Energy.” They must provide proper reasons for their refusal.
Background
Ceres Intellectual Property Company Limited (hereinafter, applicant/petitioner) had filed a patent application titled ‘Method for deposition of Ceramic Films’ in 2010 with the IPO. The invention was in respect of a method for deposition of ceramic films for the use in manufacture of solid oxide fuel cells.
In 2015, the petitioner received a copy of a letter addressed by the IPO to DAE. The Patent Office stated that it was obliged to seek DAE’s opinion on whether this invention is related to atomic energy and whether it should proceed with the patent or be refused. The petitioner addressed a letter to IPO and DAE, explaining why the invention did not fall within the ambit of Section 20(1) of the AE Act.
In 2017, IPO passed an order stating that DAE concluded the invention to relate to atomic energy and therefore it was rejected. The applicant then submitted a review petition and asked for an in-person hearing. The IPO said that “there is no provision in the Act to resend the application for reviewing directions issued by the Department of Atomic Energy. In view of the direction from the Authority Department of Atomic Energy and Section 4 of the Patents Act, 1970 patent cannot be granted in respect of the invention in an instant patent application.”
The applicant approached Bombay High Court under its writ jurisdiction and argued that the IPO provided no substantial reason while rejecting their patent application under Section 4 of the Patent Act, 1970. The only reason it provided was that it was acting according to DAE’s directive which, again, carried no reason.
While the Bombay High Court’s judgement addresses the challenge of lack of proper reasoning provided by IPO and DAE when assessing the invention under Section 4 of the Patents Act, 1970; the Applicant can provide the following information pertaining to their invention to counter Section 4 objection and aid IPO in proper assessment and disposal of application:
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- Explain the gist of invention and state that the material/substance employed in the invention is non-reactive in nature and therefore it does not pertain to atomic energy;
- The purpose of the invention does not relate to atomic energy;
- The material/substance employed in the invention does not fall under the definition mentioned by the DAE’s notification on prescribed substances/radionuclides;
- Information pertaining to radioactive emission may be provided.
Authors: Ms. Simran Kaur Khalsa, Patent Attorney, De Penning & De Penning