Abstract

Section 3(d) of the Patent Act recognizes innovations that stands the 3-pronged test of Patents: “inventive step”, “non- obviousness”, and “industrial application” thereby preventing a phenomenon called “evergreening of patents” which applies to secondary patents. Moreover, the Hon’ble Supreme Court in the Novartis case (2013) rooted for a narrow and strict interpretation of this provision. However, the question in discussion primarily focuses on the legal and economic consequences of applying different rules of interpretation to this provision with hypothetical illustrations. Firstly, the literal interpretation appears to overlook factors such as utility, public importance and intention of the legislation. Secondly, a liberal approach does not effectively prevent evergreening of patents and also has major economic consequences. Lastly, the mischief rule overcomes the fallacies in other approach but does not detach the ambiguity. In addition to this, this paper focuses on the nuances of the effect of such constitutionally valid provision on day-to-day Patent application. The provision, though prima facie appears to be non- arbitrary, statistics prove that objections under Section 3(d) have been overutilized to deny primary patents. Finally, it is asserted that there is a need to amend the provision to specifically address the threshold for ‘new forms of discovery’ and ‘new forms of invention’ to suit all rules of interpretation. Further, “efficacy” shall not only mean “therapeutic efficacy”, but shall be justiciable as to expansively read it to include factors such as bio availability, potentable, shelf life, quick healing or any other corresponding factors which will keep the test of patentability intact.

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