Disclaimer

The web site is designed for general information purposes only and should not be construed to be formal legal advice. This website is not intended for any kind of solicitation or advertising.

In case you require any advice, you are requested to contact us before acting on any information. The firm takes no responsibility for any information that may be found not upto date/ incorrect/ insufficient. 

This website does not in any way establish or intend to establish an attorney-client relationship, nor is it intended to be used as such an invitation for attorney-client relationship.

The viewer acknowledges that there has been no inducement, invitation or solicitation of any nature whatsoever from Aswal Associates or any of its members/ Attorneys/ Advocates/ Lawyers to create an attorney-client relationship through this website.

Decline

INTERPRETATION OF OBVIOUSNESS IN ASIA

Definition:

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.



INDIA

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.



KOREA:

In accordance with the Korean Patent Examination Guideline (KPEG) the following procedure is carried out for determining inventive step:



whether there is some motivation to reach the claimed invention in the prior art for a person ordinary skilled in the art;


whether the difference between the claimed invention and the prior art belongs to ordinary creative ability of a person skilled in the art; and


whether the claimed invention has any advantageous effect compared to the prior art.


Until recently Korean courts used to mechanically judge inventive step based on determination of substantial identicalness of purpose, construction and effect of the claimed invention and the prior art, and were silent on the specific standard for determination of inventive step.


However, recently on September 06, 2007 ([Supreme Court Ruling of 2005 HU 3284) for the first time Supreme Court suggested a specific standard for determining inventive step, which is different from the precedents. The Korean Supreme Court took a different approach in its interpretation of inventive step and ruled that inventive step should be denied when there is some suggestion or motivation to reach the claimed invention by combination or aggregation of the feature in the prior art or when the court can recognize that a person ordinary skilled in the art can easily come to the claimed invention by combination or aggregation of feature in the prior art in view of the level of technology, common general knowledge in the art, technical problem, progress trend of technology and needs in the pertinent technical field at the time of filing patent application.


In Korea, the manner in which an invention was made (flash of genius) generally cannot be used to deny inventive step. Many Court rulings have admitted inventive step when they recognized difficulty in construction of the invention. Therefore, assertion on presence of flash of creative genius in the invention would be supportive for inventive step.


In Korea, commercial success alone cannot be regarded as indicative of inventive step. However, commercial success can be supplementary evidence to strengthen the argument of inventive step when it coupled with other evidence for inventive step.


Through several rulings such as Supreme Court Ruling of 94 HU 1817 (Nov. 28, 1995) and Patent Court ruling of 2002 HEO 8424 (Sep. 4, 2003), Korean courts took into account the commercial success as affirmative evidence supporting inventive step of the invention when the applicant proved that his/her commercial success has been derived from the technical feature of the claimed invention, not from marketing skill or advertisement.

However, the Supreme Court clearly takes up the position that inventive step cannot be recognized only wit

News & Updates

Quick Contact

Our Services