India: Inventive Step Assessment Based On Case Laws In India


The following article intends to provide a study on inventive step requirements based on case laws in India as per the Indian Patents Act 1970.The article further delves into the definition of a person skilled in the art and methodologies employed for evaluating inventive step based on Indian case laws. Corresponding statutory provisions in India and few case laws are discussed with the aim of providing better picture for the determination of inventive step/obviousness in the Indian context.

Requirements of Patentability

As per Indian Patents Act 1970, for an invention to become a patentable subject matter must satisfy the following criteria namely,

  1. It should be novel
  2. It should have an inventive step or it must be non-obvious
  3. It should be capable of Industrial application
  4. It should not fall under any of the non-patentable subject matter as mentioned in sections 3 and 4 of the Patents Act 1970.

The criteria related to novelty and industrial applicability is well defined by the provisions mentioned in the Act. However, the criteria for inventive step/non-obviousness regarding an invention are still unclear and are debated in the patent office, courts, patentees and the IPAB.

The presence of Inventive step in an invention is decided in accordance with the provisions of section 2(1)(ja) of the Indian Patents Act, 1970.

As per section 2(1)(ja), "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.

Definition of the 'skilled Person' in the art

It is critical to understand the definition of skilled person in the context of inventive step analysis.

  • A skilled person is a hypothetical person who is presumed to know all prior arts as on that date, even non-patent art that are available to public.
  • A skilled person has knowledge of the technical advancement as on that date and the skill to perform experiments with the knowledge of state of the art1.
  • A skilled person is not a dullard and has modicum of creativity2.
  • IPAB, further clarified in Enercon vs alloys Wobbens (order no.123/2013, paragraph 30) "We do not intend to visualize a person who has super skills, but we do not think we should make this person skilled in the art to be incapable of carrying out anything but basic instructions". Choosing a better alternative/substitute from the known alternative from the prior art to obtain the known results would not go beyond what may be normally expected from person skilled in the art.

Definition of 'Prior art'

'Prior Art' constitutes any "state of knowledge existing before the priority date of the claim under consideration." Inventive step is always determined in relation to the matter published in any document anywhere in the world or any use before the priority date of the claim. Mosaicing of prior art documents is permissible in the determination of inventive step.

IPAB's decision on patenting mathematical methods: A case on inventive step and exclusions:

On July 5th, 2013, IPAB passed a decision denying a patent to Electronic Navigation Research Institute for their invention that relates to a method for calculating Chaos Theoretical Exponent value (CTEV) under 3624/DELNP/2005 .The Deputy Controller in his decision had denied a patent to the applicant on the grounds of non patentable subject matter under Section 3 (k) of The Patent Act.

The invention is about a system which makes it possible to calculate a CTEV that could be processed in a dynamics-changing system and to perform the process thereof at a high speed and on a real time basis, and to calculate a CTEV even from a time series signal which includes noises. In the conventional methods, a stable processing of temporarily changing dynamics is not possible from a continuous speech voice on real time basis.

The IPAB quoted Yahoo Vs Rediff3 decision, "When the patentee explains that there is an inventive step which is a technical advance compared to the existing knowledge (state-of the-art) or that it has economic significance that would not give him the right to a patent as such. The 'inventive step' must be a feature which is not an excluded subject itself. Otherwise, the patentee by citing economic

significance or technical advance in relation to any of the excluded subjects can insist upon grant of patent thereto. Therefore, this technical advance comparison should be done with the subject matter of invention and it should be found it is not related to any of the excluded subjects". Therefore, the IPAB upheld the Controller's decision that the Indian Patent law does not allow patent for a mathematical method just because it provides a technical advance.

Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries: Hon'ble Supreme Court of India on Inventive step4:

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 plaintiff 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.

Points to Remember in assessing inventive step from Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries case

  1. In order for the subject matter to constitute an inventive step, the alleged invention should be more than a mere workshop improvement.
  2. In case of an improvement patent, the improvement must itself constitute an inventive step.
  3. If the alleged invention, constitutes known elements or a combination of known elements the result must be new, or result in an article substantially cheaper or better than what existed.

F.Hoffman la Roche v Cipla 5: Hon'ble High Court on inventive step

Brief Background:

Roche sued Cipla in early 2008 for infringement of their Patent IN '774, claiming [6, 7-bis(2- methoxyethoxy) quinazolin-4-yl]- (3-ethynylphenyl) amine hydrochloride' also known as 'Erlotinib Hydrochloride'.No interim relief granted to Roche in the early stages of the suit and the main matter was decided after the trial vide an order dated 7th September 2012. The Single Judge's decision was that while Roche's patent IN '774 was valid (the counter claim for revocation could not be proved), there was no evidence that the alleged infringing product does, in fact, infringe their patent.An appeal was filed before the Division Bench by Roche challenging the non-infringement aspect of the order of the Single Judge and a cross appeal was filed by CIPLA in respect of primarily the validity aspect of 774.

The main issues decided by the Division Bench are:

  1. Whether Roche's compound patent, i.e. IN '774, is valid; and
  2. Whether CIPLA's product, Erlocip which is polymorphs B of the compound Erlotinib, infringes Roche's patent for the compound Erlotinib;

The Division bench of the Delhi High Court holding in its judgement that CIPLA infringed Roche's patent.

The Hon'ble Delhi High Court had observed that the obviousness test is what is laid down in Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd (AIR 1982 SC 1444) and that "Such observations made in the foreign judgments are not the guiding factors in the true sense of the term as to what

qualities that person skilled in the art should possess. The reading of the said qualities would mean qualifying the said statement and the test laid down by the Supreme Court."

The Divisional Bench of Delhi High Court laid down the following procedure to ascertain whether an invention has an inventive step or not;

  1. To identify the inventive step embodied and claimed in the patent
  2. To identify the "person skilled in the art", i.e competent craftsman or engineer as distinguished from a mere artisan;
  3. To identify the relevant common general knowledge of that skilled person at the priority date;
  4. To identify the differences, if any, between the matter cited in the alleged invention as forming part of "state of the art" and the inventive concept of the claim or the claim as construed in the patent;
  5. To decide whether those differences, viewed in the knowledge of alleged invention, constituted steps which would have been obvious to the ordinary person skilled in the art and rule out a hindsight approach.

Obviousness: Role of Reasonable expectation of success

  • IPAB in Enercon vs Aloys Wobben [ORA/08/2009/PT/CH,Oder No. 123 of 2013] [Paragraph 43] explains that that the "coherent thread leading from the prior art to the obviousness" or in other words, "the reasonable expectation of success embedded in the prior art which motivates the skilled person to reach to the
  • invention, is the most crucial determining factor in ascertaining inventive step"
  • IPAB in M/s. BECTON DICKINSON AND COMPANY vs CONTROLLER OF PATENTS & DESIGNS, [OA/7/2008/PT/DEL)[280-2012], [Paragraph 32] observes that "Obviousness cannot be avoided simply by showing of some degree of unpredictability in the art so long as there was a reasonable probability of success".
  • IPAB in Ajanta Pharma Limited vs Allergan Inc., ORA/20/2011/PT/KOL, ORDER (No.172 of 2013) [Paragraph 93] observes that "Obviousness does not require absolute predictability of success. All that is required is a reasonable expectation of success".


It is evident from the above that there are only a few Indian Case Laws pertaining to the determination of inventive step/obviousness. Hence the Indian Patent Office and the Courts as well as IPAB are in a situation to rely upon case laws of other major patent jurisdictions in the assessment of inventive step. Due to the increase in the amount of patent filing in India, patent practioners, Stake holders and others could expect more clarity in the interpretation of statutory provisions in future pertaining to determination of inventive step/obviousness.







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.

In association with
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.