India: Determination Of Obviousness/Inventive Step - Indian Approach

PATENTABILITY REQUIREMENTS

For an invention to be patentable:

  • it has to be novel (new)
  • it has to involve an inventive step (non-obvious)
  • it has to be industrially applicable (can be made or used in an industry)

Apart from satisfying these criteria, the invention should also not fall under the category of non patentable subject matter, as per Section 3 of the Indian Patent Act.

It is important that before applying for a patent, one tries to ascertain whether the proposed invention satisfies all these criteria for the successful grant of a patent for an invention. The criteria related to novelty and industrial applicability are generally regarded as being well defined and understood based on the definition provided in the Act. However, the concept of non obviousness or the presence of inventive step in a proposed invention is still under debate among the patent office, courts and patentees.

INDIAN DEFINING OF "INVENTION" - HISTORY AND EVOLUTION

First definition, 1972

"Invention" means any new and useful-

  1. art, process, method or manner of manufacture;
  2. machine, apparatus or other article;
  3. substance produced by manufacture.

and includes any new and useful improvement of any of them, and an alleged invention.

As can be seen above, the phrase "inventive step" was not even included in the definition.

Second definition, 2002

  1. "invention" means a new product or process involving an inventive step and capable of industrial application;
  2. "inventive step" means a feature that makes the invention not obvious to a person skilled in the art.

The phase "inventive step" was included in the definition of "invention". Further, the phrase "inventive step" was also defined.

Current definition, 2005:

  1. "invention" means a new product or process involving an inventive step and capable of industrial application;
  2. "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.

The definition of the phrase "inventive step" was amended to broaden the scope of "inventive step".

"INVENTIVE STEP" AS LAID BY THE INDIAN PATENT ACT

The term "inventive step" plays a vital role in deciding whether a patent should be granted to a proposed invention.

As per sec 2 (l) of the Patents Act, a new invention means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art.

In 2005, India, for the first time, defined as to what constitutes an "inventive step" by incorporating a new provision in the definition section of the Patents Act. Section 2(1)(ja) of the Act defines "inventive step" to mean "a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art".

If an invention lacks the presence of an inventive step, then, this deficiency can be considered as valid grounds for opposition for the grant of a patent, under section 25 (1)(e) and 25 (2)(e) and for revocation under section 64 (1)(f) of the Act.

Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries: Case Law Interpretation on Inventive step

This case can be considered to be the most important case in interpretation of inventive step in the Indian jurisdiction. Though the case was decided in 1978, the principles laid down in the case are followed even today and have been codified in the Indian Patent Act.

The plaintiff (Hindustan Metal Industries, a registered partnership firm carrying on the business of manufacturing brass and German silver utensils at Mirzapur) in this case claimed to have invented a device and method for manufacturing utensils, introducing improvement, convenience, speed, safety and better finish, in the old prevalent method which was fraught with risk to the workers, in as much as the utensils used to fly off from the headstock, during the manufacturing process. The plaintiff got the invention patented, as an assignee, under the Indian Patent and Designs Act, 1911 on May 6, 1951 with effect from December 13, 1951. In September 1952, the plaintiff learnt that the defendant (Bishwanath Prasad Radhey Shyam, a concern carrying on the business of manufacturing dishes and utensils in Mirzapur) was using and employing the method under the former's patent. The plaintiff served a notice upon the defendant asking him to desist from infringing the plaintiff's patent and further claim damages for Rs. 3000. The validity of the patent was challenged by defendants on the ground of lack of novelty and inventive step and also filed a counter claim praying for the revocation of the plaintiff's patent on the same ground. A division bench of a district court of Allahabad started its analysis of inventive step and after considering the prior art in the case, stated that the patented invention was merely an application of an old invention, known for several decades before the plaintiff's patent, which was no more than a workshop improvement. The court as a result had issued the petition for revocation on the patent. The plaintitiff made appeals to a division bench of the High Court, where the appellate bench concluded that the method of manufacture did not involve any inventive step or novelty. Furthermore, as the invention was publicly used by the patent holder before the date of filing of the patent application, the Court observed that the novelty of the invention was negated. In the light of its analysis, the court concluded that the invention lacked novelty and inventive step.

ASSESSMENT OF INVENTIVE STEP

If, a product or a process is novel, the next question that arises is "Is the approach obvious and if it not then what is the depth of the inventive measures taken by the inventor". To determine obviousness is to find out whether the person, with ordinary skill in the art, would have come up with similar innovation for the technical problem under similar circumstances without being provided with the solution.

Since the Patents Act (1970) was brought into force, there have been a few cases in India that have dealt with the obviousness issue extensively. The Supreme Court held that obviousness has to be strictly and objectively judged. The Supreme Court further recognized that obviousness is something that is a natural suggestion of what was previously known.

A test to determine whether a document can negate the existence of inventive step is as follows:

Had the document been placed in the hands of a competent craftsman (or engineer as distinguished from a mere artisan), endowed with the common general knowledge at the 'priority date', who was faced with the problem solved by a patentee but without knowledge of the patented invention, would he have said, "this gives me what I want". To put it in another form: "was it for practical purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned?"

Novartis v. Union of India case law interpretation on Obviousness

Novartis filed an application for grant of patent for chemical compound called Imatinib Mesylate which is a therapeutic drug for chronic myeloid leukemia and certain kinds of tumours and is marketed under the names "Glivec" or "Gleevec" at the Chennai Patent Office on July 17, 1998. In the application it claimed that the invented product, the beta crystal form of Imatinib Mesylate, has more beneficial flow properties better thermodynamic stability and lower hygroscopicity than the alpha crystal form of Imatinib Mesylate and further claimed that the aforesaid properties makes the invented product novel. The patent application had attracted five (5) pre-grant oppositions in terms of section 25(1) of the Act. The Assistant Controller of Patents and Designs heard all the parties, on December 15, 2005, as provided under rule 55 of the Patent Rules, 2003, and rejected the appellant's (Novartis) application for grant of patent to the subject by 5 (five) separate, though similar, orders passed on January 25, 2006 on the opposition petitions. The Assistant Controller held that the invention claimed by the appellant was anticipated by prior publication, i.e., the Zimmermann patent; that the invention claimed by the appellant was obvious to a person skilled in the art in view of the disclosure provided in the Zimmermann patent specifications. The Supreme Court of India rejected Novartis patent plea on April 1, 2013

Person skilled in the art

Obviousness is judged based on the hypothetical construct of a "person of ordinary skill in the art". The person of ordinary skill in the art must:

  • belong to the relevant field.
  • look at the prior art from a position of his personality, considering his/her interest in risk taking.
  • be well aware of the fact that even a small structural change in a product or in a procedure can produce dramatic functional changes.

The person of ordinary skills in the art must be given the problem and asked whether he can solve it. This is what is referred to as the 'Hindsight Element'. Obviousness is not established by drawing a line from the solution to the problem, or by finding the explanation for how the inventor did it. It is not permissible to look at the invention and try and figure out the logic behind it and then look for prior art documents which support disclosures throwing light on such logic. Therefore, the person of ordinary skill in the art would constantly be conditioned by the prior art and, before taking action, would carefully ponder any possible modification, change or adjustment against the background of the existing knowledge.

CONCLUSION

India has been witnessing an increase in patent enforcement activities. Going forward, one can anticipate much more refined tests for determining the presence of inventive step in inventions. It is recommended that patent practitioner keep themselves educated about this fascinating topic of "inventive step/obviousness" and provide informed opinions.

About the author: Hemanth Puttaiah has extensive experience in delivering patent consulting services in the software engineering domain. He has been offering patent specification drafting, patent analytics and patent support services to technology companies and patent practitioners in US and Europe. He has in-depth knowledge of various international treaties governing patent filing and prosecution across the globe, and advises clients on patent strategy. Hemanth started his career as a software engineer, where he worked on several open source technologies. His working experience as a software engineer prior to entering the field of IP has enabled him to add significant value to our clients in the software engineering domain. Hemanth holds a Bachelors of Engineering Degree from University B.D.T. College of Engineering. He is also a registered patent agent.

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