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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions