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.

Similar Articles
Relevancy Powered by MondaqAI
Vaish Associates Advocates
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Vaish Associates Advocates
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