India: Determination Of Nonobviousness: An Indian Approach

"... and in every age there come forth things that are new and have no foretelling, for they do not proceed from the past."1

Non-obviousness of the invention is one of the three desiderata for the grant of Patent, others being novelty and industrial application. Simply put nonobvious as a patent term means that the invention shall not be obvious or apparent to a person ordinary skilled in the field relating to the invention. Basically the invention shall contain an inventive step over the prior art. It should not be mere a workshop improvement or general re-arrangement of components / features of the invention.

This test of non-obviousness is to be made with the perspective of a person having ordinary skill in the art i.e. having average skills, and not an expert in that technology. The test is very essential and subjective too, while deciding the inventive step the adjudicator needs to assess the "inventive step" on the scale and parameters of a person ordinarily skilled in that art.

The Delhi High Court in the matter titled Asian Electronics Ltd. Vs. Havells India Limited2 looked into the basic criteria of patentability, particularly "non-obviousness" or "Inventive-step" in a Patent. In this article the focus will be on the concept of non-obviousness in the patent laws and the above mentioned case.

The US Supreme Court has discussed the aspects involved in the non-obviousness analysis in the landmark case Graham et al. v. John Deere Co. of 2 Kansas City et al3. Three factors were laid down as tests for which should be looked into while determining obviousness, these are commonly known as Graham factors:

  1. the scope and content of the prior art;
  2. the differences between the prior art and the claims at issue; and
  3. the level of ordinary skill in the pertinent art.

Apart from the above factors the US Apex Court also laid down secondary considerations as:

  1. commercial success of the invention,
  2. long felt but unsolved need, and,
  3. failures of others could serve as evidence of nonobviousness.

The Supreme Court of India in M/s. Bishwanath Prasad Radhey Shyam Appellant v. M/s. Hindustan Metal Industries4, laid down the importance of assessing inventive step, as below-

"It is important that in order to be patentable 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'. To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. The combination of old known integers may be so combined that by their working interrelation they produce a new process or improved result. Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent."

Facts of the case Asian Electronics Ltd. Vs. Havells India Limited:

Asian Electronics (hereinafter plaintiff ) being owner of patent no. 193488 for "Conversion Kit to change the fluorescent lighting units inductive operation to electronic operation" filed a suit for permanent injunction and damages for infringement against Havells Limited (hereinafter defendant). The plaintiff alleges that the defendant is using all the novel and important features of their invention. The comparison between defendant's product and plaintiff's patented invention was done as below:

S.No. Claim 1 of patent no. 193488 Product of Defendant
1 Conversion Kit YES
2 Adaptors on either side of fluorescent lamp Yes
3 Wiring assembly YES
4 Ballast Present, mounted in wiring assembly

The plaintiff submitted that the novel features of the invention are the two adaptors based on 2 sides which assist in the process of conversion to electronic current from induction and thus minimize flickering which is normally associated with fluorescent lights. The defendant alleged that the plaintiff's invention is not entitled to a patent on as it is based on a prior art. It was alleged that the patent is based on the US Patent 4246629 which discloses all the essential or important elements of the plaintiff's patent. Defendant further submitted that the plaintiff's patent is just workshop improvement or trade variant of the US Patent; it lacks the inventive step essential for the grant of Patent under the Act. Sections of the Patent Act are reproduced as cited by the defendant.

SECTION 3. WHAT ARE NOT INVENTIONS:-

(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

The Court upon analysis of plaintiff's patent stated that plaintiff is not claiming that any of the components are inventions, or involve a new or inventive step; the patent is claimed for the kit, which incorporates the two sleeve-like ends, one or both of which contain the ballast. In other words the claim is only in respect of the design or this particular assembly.

The Court was of view that the plaintiff's patent does not disclose any new product or any significant improvement. It was held that the plaintiff's patent is mere a workshop improvement over the US Patent; the comparison of the US Patent with the plaintiff's is as below:

Embodiment US Patent Plaintiffs Patent
1. Fluorescent Tube Present Present
2. A pair of sleeve like adaptors on each side of lamp Present Present
3. Wiring Assembly Present Present
4. Conversion kit Present Present

Based on above the Court was of prima facie view that the patent cannot sustain as being obvious, and is also hit by the section 3(d) and 3(f ) of the Patents Act, 1970.

The High Court took reliance on the decision reported as British Celanese Ltd v. Courtaultds Ltd5., it was held, of patents involving combinations, that:

It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working interrelation producing a new or improved result then there is patentable subject matter in the idea of the working inter relation brought about by the collocation of the integers.

The High Court observed that the US patent clearly mentions about two ends and electronic ballast as claimed by the plaintiff in its patent. Further the function of the end product is the same, i.e. a fluorescent lamp. The plaintiff' also failed to explain any significant improvement in function or efficiency, or any objective material in the new product, it has to be concluded that the patent is hit, prima facie, by anticipation. In view of the above findings and precedents the Court dismissed the application for grant of injunction stating that patent is anticipated by prior art and the plaintiff has failed to establish balance of convenience in his favour.

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.6 This test of non-obviousness is to be made with the perspective of a person having ordinary skill in the art i.e. having average skills, and not an expert in that technology. The test is very essential and subjective too, while deciding the inventive step the adjudicator needs to assess the "inventive step" on the scale and parameters of a person ordinarily skilled in that art.

Footnotes

1. J.R.R. Tolkien, "The Simarillion", Ainulindale.

2. I.A. No. 8205/2009 in CS(OS) 1168/2009

3. 383 U.S. 1 (1966)

4. AIR 1982 SC 1444

5. 1935 (52) RPC 171

6. http://www.invntree.com/blogs/determination-obviousnessinventive-step-indian-approach

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