INTRODUCTION
Patents safeguard inventions by granting exclusive rights, but not all inventions qualify. For an invention to be patentable, it must meet three fundamental criteria: novelty, an inventive step (non-obviousness), and industrial applicability. While the criteria for novelty and industrial applicability are generally well-defined and understood based on the Act’s provision, the concept of non-obviousness, or the presence of an inventive step, remains a subject of debate among the patent office, courts, and patentees. Historically, there was no formal definition of “inventive step” in Indian patent law. It was first introduced in 2002, and defined as “a feature that makes the invention not obvious to a person skilled in the art.” This definition was further refined in the 2005 Patent Amendment Act.
Section 2 (ja) of the Patents Acts states the definition of inventive step 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 absence of an inventive step in an invention can serve as a valid ground for opposing the grant of a patent under Section 25 (1)(e) and 25 (2)(e), as well as for revocation under Section 64 (1)(f) of the Act.
To evaluate the presence of an inventive step in a patentable subject matter, the examiner may combine or “mosaic” the teachings of multiple prior arts. If this combination produces a subject matter closely related to the invention in question, the inventive step is challenged. In other words, if the combined prior art results in something that performs similarly, addresses the same problem, or offers a comparable solution as the invention, it will not be considered to possess an inventive step.
A PERSON SKILLED IN ART
The Indian Patent Act also does not define ‘a person skilled in art’. The discretion lies with the examining authority to identify the inventive step. Based on the legislative and judicial interpretation, it is generally accepted that a person skilled in the art is one who:
- Belongs to the same field as the subject matter in question;
- Assesses the subject matter based on their expertise or acquired knowledge within the domain;
- Recognize that even minor structural changes in a product or process can lead to significant functional differences.
JUDICIAL INTERPRETATION
Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries is considered the landmark judgement interpreting the inventive step in India. The decision was made in 1978 and the principles enumerated in the case are followed even today.
Here the court held that the primary objective of Patent law is to promote and foster scientific research, new technology and industrial development. By granting an inventor exclusive rights to own, use or commercialize their patented product for a limited period, the law incentivizes the creation of commercially valuable inventions. In return for this temporary monopoly, the inventor is required to disclose the details of the invention to the Patent office. The innovation enters the public domain once the patent period expires.
The court stated that “The fundamental principle of Patent Law is that a patent is granted only for an invention which must be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of a patent that it must be the inventor’s discovery as opposed to mere verification of what was already known before the date of the patent.” The court observed that a patent is granted only for a “manner of new manufacture”. While an invention may be new and pertain to manufacturing, it must represent more than a routine advancement of existing methods. Craftsmen are expected to adapt their skills to evolving demands, and granting monopolies that hinder this natural application of expertise would be unacceptable.
The court, addressing the dispute, narrowed it down to two issues:
- Whether the patent was not at the date of the patent, a manner of new manufacture or improvement?
- Whether the invention does not involve any inventive step, having regard to what was known or used before the date of the patent?
The term “does not involve any inventive step” as used in Section 26(1)(e) (now Section 64 (1)(f)) of the Patents Act, 1970), and its equivalent term “obvious”, hold a distinct meaning in Patent Law. The assessment of “obviousness” must be conducted strictly and objectively, with various formulations proposed to guide this determination.
The question of novelty and ‘inventive step’ is a mixed question of law and fact. It is largely dependent on the circumstances of each case. While no universal test applies to all cases, certain general criteria can help assess patentability. A key consideration is whether the patented “manner of manufacture” was publicly known, used or practised in the country before or at the patent’s date. If so, it negates novelty. Public knowledge of an invention may arise through oral communication or publication in books. This may disqualify the patent protection. As Hindmarch notes “Once the public gain access to an invention by any means, no patent can later be granted, as the public cannot be deprived of its existing right to use the invention.”
A test to determine whether a document negates novelty or an “inventive step” is as follows:
- If a competent craftsman or engineer, equipped with the general knowledge available at the priority date but unaware of the patented invention, were presented with the document while addressing the same problem, would they recognize it as providing the solution sought?
- Alternatively, was it practically obvious to a skilled professional, based on the existing state of knowledge and available literature at the time, to arrive at the claimed invention?
The court held that the patented machine did not demonstrate substantial inventive effort or innovative skill. There was no evidence to suggest it resulted from research, independent thought, ingenuity, or expertise. Furthermore, applying the established legal tests, the patent was found to lack both novelty and invention. The court overturned the judgement of the Appellate Bench and restored the trial court’s decision.
DETERMINATION OF INVENTIVE STEP
In determining patentability, an Examiner first assesses the novelty of the claimed invention and then evaluates whether it involves one or more inventive steps.
- Prior art revealed during the search is used to assess if it discloses the claimed invention.
- Publications at the time of filing the complete specification are considered prior art.
- Indian applications filed before but published after the current application’s filing are prior art.
- The invention must be considered as a whole, not just individual parts.
- If the invention only verifies predictions without adding technical or economic value, it lacks an inventive step.
- A combination of prior arts can be used to show obviousness if they are enabling.
- If the invention is predictable and requires only routine improvement, it lacks an inventive step.
CONCLUSION
In conclusion, the determination of an inventive step is vital in assessing patentability in India. The process evaluates both novelty and non-obviousness, considering the invention as a whole rather than just individual components. Prior art plays a crucial role in this evaluation.
The Patents Act of 1970 ensures that patents are granted only for genuine innovations that offer technical advancements or economic value. Judicial interpretations emphasize that routine improvements or mere verifications do not qualify for patent protection, maintaining a balance between fostering innovation and preventing monopolies on obvious advancements.
SOURCES:
- What is an Inventive step objection and how to overcome it? By Priyanka Chakraborty.
- Decoding Inventive Step for Patents in India, by SJP Team.
- Assessment of the inventive step in India, by Eeshita Das and Archana Viswanathan.
- The Patents Act, 1970.
- Avery Dennison Corp. v. Controller of Patents and Designs. (C.A. (COMM.IPD-PAT)) 29/2021.
- Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries. (AIR 1982 SC 1444).
