Worldwide: Non-Obviousness: Comparison Between India, Europe And The US

Last Updated: 24 August 2016
Article by Intepat Team

What can be patented is a question that is often asked by inventors. It is always better to have a heads up on what can be patented in order to determine the patentability of an invention before filing for a patent. Our previous blog post has comprehensively explained the patentability requirements. The patentability requirements may be summarized as below:

1. Novelty

2. Non-obviousness

3. Capable of Industrial Application

Of the aforementioned requirements, the requirement of non-obviousness is relatively controversial given the fact that there is no set standard for determining whether an invention is obvious or not. Non-obviousness means the invention must not be obvious to a person skilled in the same field as the invention relates to. This is, therefore, a subjective requirement that varies from one invention to another. In order to circumvent this subjectivity, different jurisdictions have adopted different criteria for determining whether an invention was obvious or not.


The non-obviousness/ inventive step criteria  is defined under Section 2(ja)  of the Patents Act, 1970 as "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 statutory definition only goes as far as stating that in order to be patentable one requirement is that the invention must a 'technical advance' or 'economic significance' in comparison with the prior arts, thus making the invention non-obvious to a person skilled in the same field as the technology relates to. The definition gives scope for subjectivity in terms of interpretation.

The Supreme Court in the case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (13.12.1978) interpreted the term inventive step. In this case, the court opined that 'obviousness' has to be strictly and objectively judged. The test laid down by the court to determine obviousness was:

'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 the patentee but without knowledge of the patented invention, would he have come up with the invention in question'

Simply put, according to the test, what has to be determined is whether at the time the invention was made, any other person skilled in the same field as the invention could have come up with the same invention, if faced with the same problem.

Despite the fact that the case was decided in 1978, the relevance of the case has not diminished with time. Therefore, in India, the statute defines inventive step and the judicial precedent provided an objective interpretation of the requirements for determining the obviousness of an invention.


The European Patent Convention states that for an invention to be patentable it must be new and it must involve an inventive step.

Article 56 of the European Patent Convention envisages the meaning of 'inventive step'. The Article reads as follows: "An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art."

As it can be seen from above the EPC does not elaborate on the criteria for determining whether an invention is obvious or not. The Boards of Appeal of the European Patent Office solved this dilemma by evolving a problem-solution approach for determining the obviousness of an invention.

The problem-solution approach is employed in three stages:

1. Choose the closest prior art- the closest prior art in this context refers to a prior art that belongs to the same technological field as the invention in question. It must be the most similar prior art available.

2. Determine the technical problem- in this stage, the technical problem that the invention addresses and solves must be determined. This stage also involves determining the technical differences between the invention in question and the closest prior art.

3. Examine the solution- the solution to the determined technical problem must be assessed for obviousness. In other words, what must be assessed is whether the solution proposed by the invention is obvious to a person skilled in the same field as the invention. In this stage it must be assessed whether anything in the prior art not only could but would prompt a person skilled in the art to find a solution to the technical problem, thus coming up something same or similar to the invention in question.

Thus, in Europe, the problem-solution approach is used to determine the obviousness of an invention.

United States:

35 U.S. Code § 103 lays down the conditions for patentability with regard to non-obviousness. It reads as follows: "A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains."

This provision was interpreted and explained by the United States Supreme Court in the precedent Graham vs. John Deree. The Supreme Court formulated the following guidelines to determine the obviousness of an invention:

1. Determine the scope and content of prior art

2. Analyze the differences between the prior art and the invention in question

3. Determine the level of ordinary skill in the pertinent art

4. Ascertain the secondary considerations of non-obviousness. Secondary considerations like a long felt but unmet need for a device or the failure of others to solve the problem addressed by the invention in question suggests that a patent must be issued, even if the invention in question seems obvious.

The US Courts have envisaged multiple ways of determining the obviousness in an invention. The above-stated precedent can still be used to determine obviousness.

On an evaluation of the three jurisdictions, i.e. India, Europe and the US, it is clear that statutorily the determinant for obviousness in all three jurisdictions is whether the invention in question would be obvious to a person skilled in the art. Only the methods of interpretation have been laid down by different precedents in each jurisdiction.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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