The Doctrine of Obviousness in India

Obviousness is a noun, derived from word obvious meaning easily seen, recognised or understood. The word obvious has originated from the Latin word “obvius” meaning “in the way”.

 
To interpret the doctrine of obviousness it is necessary to first understand the objective of grant of Patent.

Object of grant of patent is to encourage scientific research, new technology and industrial progress and for that object exclusive privilege is granted. At the same time before awarding patent for any invention it has to be considered that the invention must be novel, must involve an inventive step and must have industrial application. These requirements are to be strictly followed before a patent could be granted for any invention in any country all over the world.

A. Obviousness under 1970 Act

Only a ground under opposition that too after grant and Revocation of Patents

The invention was defined under Section 2(1) (j) the Indian Patents Act, 1970;

(j) “invention” means any new and useful-art, process, method or manner of manufacture; machine, apparatus and other article; substance produced by manufacture, and includes any new and useful improvement of any of them, and an alleged invention.

As inventive step was not defined in an invention, there was no such provision during examination.

Only after advertisement of acceptance of complete specification within 4+1 months, under Section 25(1) (e) not having the inventive step is a ground for opposition.

(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;

Absence of inventive steps is also a ground for revocation under Section 64 (1) (f) of the Patents Act:-

(f) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;

Therefore under the 1970 Act onus that the invention does not involve any inventive step was on the person interested.

B. Under the Patent Amendment Act in 2003 (that came into effect on 20.05.2003)

No change in the definition of invention till 2003

Definition of invention changed (Section 2(1) (j) now the “invention” means a new product and process involving an inventive step and capable of industrial application.

After which the inventive step was also considered during the examination.

And the Inventive step was defined under Section 2 (1)(ja) of the Patents Act

“inventive step” means a feature that makes the invention not obvious to a person skilled in the art”.

C. Further under the Patent Amendment Act, 2005 (which came into effect retrospectively 01.01.2005)

The Definition of Inventive step was further revised.

Now under Section 2(1)(ja) the “inventive step” means a feature of an invention that involve 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.

Even the official manual of the Indian Patent practice acknowledges that “definition of inventive step has been enlarges to include economic significance of the invention apart from already existing criteria for determining inventive step”.

But the expression “or” denotes that economic significance has to be given similar importance as to technical advancement and both have to interpreted in terms of knowledge and skill of the person skilled in art. Further it is apparent from the intention of the legislature that either the economic significance or technical advancement has to be present for qualifying the invention under the inventive step.

D. Approach of Indian Patent Office

1. Considers novelty and inventive step as one or the same thing.
The Indian Patent Office considered the novelty and inventive step on the same lines which reflects in the examination report issued by them.

2. Gives importance even to “A” category citations in the ISR/IPER for construction of Inventive step.

In a mechanical manner the Patent Office gives importance to even ‘A’ category citations and requires elaboration and difference in terms of inventive steps with regards to such cited arts.

3. Requires characterization in the claims-

It has become the practice of the Indian Patent Office to require characterization clause in the main claim for determination of the inventive step. Wherein claims contains two portion one pre characterization one post characterization, the post characterization portion in considered to involve inventive step over pre characterization portion and thereon the dependent claims also relate to only post characterization portion.

4. As per the Manual of Indian Patent practice: The inventive step has to be determined in the following manner.

Has to be non-obvious when compared with the state of art,
State of mind (Flash of Genius) is to be looked into, the following question has to be borne into mind “would a non-inventive mind have thought of the alleged invention?” if answer is “no”, then the invention in non-obvious. (In other words whether the invention would have occurred to a person skilled in the art, if yes, then it is obvious.)

5. Whether the invention involves exercise of any skill or ability beyond than what is expected of a person skilled in the art. Combining the teaching of documents (Mosaics) with the art.

Although as per the manual of Patent practice for consideration and determination of the inventive step, the invention has to be looked as a whole and no conclusion should be made by taking individual parts of the claims that might be known or found to be obvious, but still the practice differs from the manual and without taking regard to whole claims/ invention, objections are raised and the Applicant is made to himself point out the inventive step in the invention.

Conclusion:

Broadly the interpretation of obviousness or lack on inventive step is similar all over the world, the only difference in approach of the particular Patent office. In India lack of any judgment by the Supreme Court of India on the subject matter leaves the interpretation of obviousness to practice of Indian patent office. In absence of authorities the interpretation varies from Examiner to Examiner and involves use of discretionary power.