India: Inventive Step Assessment Based On Case Laws In India

Introduction:

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".

Conclusion:

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.

Footnotes

1 http://www.ipabindia.in/Pdfs/Order-161-2013.pdf

2 http://www.hkindia.com/images/roche.pdf  

3 http://www.ipabindia.in/Pdfs/Order-222-11-OA-22-10-PT-CH.pdf  

4 https://indiankanoon.org/doc/1905157/  

5 https://indiankanoon.org/doc/123231822/  

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